- Hanshow America Inc. / Hanshow Technology Co., Ltd. v. Ses-Imagotag GmbHSome claims unpatentablePTAB · May 14, 2025 · IPR2024-00188 · APJ Terrence W Mcmillin · IPR · Final written decision
Claims 1–10 and 12–15 are unpatentable as obvious over either asserted combination; claim 11 was not shown unpatentable under either ground.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“The only significant difference between the positions of Petitioner and Patent Owner is that Patent Owner would require that a skilled artisan have coursework or training or work experience in multimedia systems in addition to the other requirements. Otherwise, the positions of the parties are similar. Based upon this record and the qualifications on which the parties and their experts agree, we determine that a person of ordinary skill in the art to which the ’669 patent relates would have at least a Master of Science Degree (or higher degree) in an academic area emphasizing electrical engineering, computer engineering, or a similar technical Master’s Degree; or alternatively, a Bachelor’s Degree (or higher degree) in an academic area emphasizing electrical engineering, computer engineering, or an equivalent field with two or more years of work experience in a relevant field or relevant industry experience. However, our decision on obviousness is supported by either of the definitions offered by the parties.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“Accordingly, we determine that no claim terms require express construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . 4 Neither party argues lexicography or disavowal applies to any claim term. See generally Pet.; see generally PO Resp. 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))). We apply the plain and ordinary meaning to all the claim terms. To the extent it is necessary to address the meaning of any claim term in order to make a final determination whether or not any challenged claim is unpatentable based on the arguments and evidence presented, we address the meaning as part of our unpatentability analysis.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“[1.0] A video playback system (1), comprising The Petitioner contends that the preamble of claim 1 is not limiting. Pet. 17 (“The preamble of claim 1 is not limiting because it merely states the purpose or intended use of the alleged invention. It does not define any of the claim limitations, which are set forth fully in the body of the claim (i.e., a video playback system).”). Nonetheless, Petitioner cites both Swafford and Masumoto and shows both cited references disclose video playback systems. Id. at 17–18. Patent Owner does not dispute Petitioner’s contention that the preamble is not limiting or dispute that the cited art discloses the preamble. See generally PO Resp. We determine that the preamble is not limiting but, if it were, the cited art has been shown to teach it. [1.1] a number of playback devices (6A, 6B) to playback a video on their” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“However, we do agree with Patent Owner that Petitioner’s contention that the cited combination of teachings is supported “because of the structural similarity between Swafford’s and Masumoto’s devices” (Pet. 54– 55) does not provide a motivation to combine. PO Resp, 47–48. The only structural similarity relied on by Petitioner in support of this argument is that Swafford and Masumoto both disclose use of LCDs. See Pet. 54–55. Petitioner provides an inadequate explanation as to how or why the use of LCDs which are a common form of video displays would motivate the combination of the relied-upon teachings. But, this deficiency does not undermine the persuasiveness of Petitioner’s overall showing of motivation to combine. After considering all the arguments and evidence offered by the parties, we determine that Petitioner shows that a person of ordinary skill in the art would have been motivated to combine the relied-upon teachings of Swafford and Masumoto with a reasonable expectation of success.” slip op. at 48
Patent outcomesUS 11,405,669 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,405,669 - Hanshow America Inc. / Hanshow Technology Co., Ltd. v. Ses-Imagotag Inc.No claims unpatentablePTAB · May 14, 2025 · IPR2024-00189 · APJ William V Saindon · IPR · Final written decision
Claims 1–9 were not shown unpatentable because Fujiwara lacks the claimed horizontal position, and Bandy with Fowler lacks the claimed vertical position.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art . . . would have had at least a Master of Science Degree in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field (or a similar technical Master’s Degree, or higher degree). Ex. 1009, ¶34. Alternatively, . . . a Bachelor’s Degree (or higher degree) in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field with two or more years of work experience in electrical engineering, wireless telecommunication systems, computer engineering, or an equivalent field. Id. Additional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above. Id. Pet. 9. Patent Owner applies the same definition. PO Resp. 17. We apply the parties’ proposed level of ordinary skill because it is reasonably consistent with the level of skill implied in the disclosure of the ’340 patent and the cited prior art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededGranted in part
“c) Conclusion Having reviewed the claim language and the specification, we determine that the claimed planogram stores one piece of data with respect to identification—a unique identifier—and two pieces of data with respect to location—a vertical position and a horizontal position. Further, claim 1 states that each location (i.e., each horizontal/vertical position pair) is unique (“one-to-one”) for each unique identifier. Ex. 1001, 8:25–27. Thus, we determine that no horizontal/vertical position pair will be associated with more than one unique identifier (and vice versa). No other terms require construction at this time. See Realtime, 912 F.3d at 1375.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“taught by “the horizontal position of the electronic shelf label along the horizontal shelf part 21, as shown in FIG. 4.” Pet. 21 (citing Ex. 1009 ¶ 75). Certainly, each shelf label in the real world, as well as in the drawing of Figure 4, has a horizontal position. However, that does not mean that Fujiwara’s database stores information indicating the horizontal position of the shelf label as required by the claim. The claim is not calling for the shelf label to have a location; it is calling for location information to be accessible by the server so that the server can determine the location of the mobile terminal. Ex. 1001, 8:19–24 (claiming a “method being performed by a central server configured to access a planogram associating . . . identifiers . . . with . . . locations . . . defined by a vertical and horizontal position”), 8:41–46 (claiming a method step of “determining a location of the mobile terminal . . . based on . . . the planogram). For example, fields in a database storing horizontal and vertical positions would be sufficient. Id. at 6:31–36 (“The central server 2 determines the location of said mobile terminal 1 from the identifier of said electronic label 3 using the data of a planogram associating a location with the label identifier.”), 7:16–18 (calling for the planogram to be stored in a database). To the extent we accept that Fujiwara teaches a unique identifier (shelf label ID) and a vertical position (e.g., shelf number 21-1), we find Fujiwara to be missing a horizontal position as required by the claim because neither the shelf number nor the shelf label ID provides an indication of where along the shelf the shelf label is located.” slip op. at 14
- ExcludeMotion to exclude, deniedDenied
“III. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner moves to exclude Exhibits 1013–1021 and 1024–1027. PO Mot. Excl. 1. Our analysis above focuses on a dispositive issue regarding the claimed planogram. We are not apprised of any citations to these documents in the briefing regarding the planogram issue. Indeed, according to Patent Owner, Exhibits 1013–1021 involve one of the issues we did not address, regarding near-field communications. PO Mot. Excl. 3–4. Because this motion involves a question on evidence that is not relevant to the issues discussed in this Decision, we need not rule on the motion at this time. We dismiss Patent Owner’s motion to exclude as moot.” slip op. at 27
Patent outcomesUS 10,674,340 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,674,340 - Xu Peicheng (Hong Kong) Optoelectronic Technology Co., Limited v. Semisilicon Technology Corp.Some claims unpatentablePTAB · May 14, 2025 · IPR2024-00156 · APJ Sheila F Mcshane · IPR · Final written decision
Claims 1–3 and 8 are unpatentable over the stated obviousness grounds; claims 4–6 were not shown unpatentable because Hiroyuki does not teach the claimed terminal pins.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. Level of Ordinary Skill in the Art Relying on the Schubert Declaration, Petitioner proposes that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, physics, materials science, or a related discipline, and 6 years of 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), includes amendments to Section 103 that became effective on March 16, 2013. Because the challenged claims issued from an application filed before March 16, 2013, we apply pre-AIA law. See Pet. 2; Ex. 1001, codes (22), (30). 2 US 2009/0021955 A1, published January 22, 2009 (Ex. 1004, codes (10), (43)) (“Kuang”). Petitioner contends that Kuang is prior art to the ’546 patent at least under pre-AIA 35 U.S.C. § 102(b). Pet. 2. 3 US 2012/0050606 A1, published March 1, 2012 (Ex. 1005, codes (10), (43)) (“Debevec”). Petitioner asserts that “[b]ecause Debevec was filed prior to the priority date of the ’546 patent, it qualifies as prior art at least under pre-AIA 35 U.S.C. § 102(e).” Pet. 2. 4 US 6,774,584 B2, issued August 10, 2004 (Ex. 1008, codes (10), (45)) (“Lys”). Petitioner contends that Lys is prior art to the ’546 patent at least under pre-AIA 35 U.S.C. § 102(b). Pet. 2–3. 5 JP2006-228529, published August 31, 2006 (Ex. 1006, code (43)) (“Hiroyuki”). We refer herein to the certified English translation filed as Exhibit 1007. Petitioner contends that Hiroyuki is prior art to the ’546 patent at least under pre-AIA 35 U.S.C. § 102(b). Pet. 2. practical experience in designing or fabricating LED lighting systems, including controlling and driving LEDs,” or “[a]lternatively . . . would have had a master’s degree and four years of experience, or a Ph.D. degree and two years of experience.” Pet. 5 (citing Ex. 1003 ¶ 31). Patent Owner applies Petitioner’s asserted level of ordinary skill in the art. PO Resp. 7–8. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’546 patent and the prior art before us. 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 neededNot reached
“The parties also dispute the interpretation of the term “synchronous signals” recited in claim 1, with the parties proposing these respective constructions: Petitioner’s Proposed Patent Owner’s Proposed Construction Construction “signals that are sent to the slave “signals related to activities governed by synchronized timing” nodes to control their corresponding LED strings at the same time.”” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The “context” is typically evaluated by reviewing the intrinsic record. See e.g., Regeneron, 130 F.4th at 1380–84. Here, as discussed above, the ’546 patent has multiple disclosures where a curtain lamp has a single light-emitting diode in one light-emitting diode string. See Ex. 1001, 1:33–36, 6:15–20, 6:27–40, 8:25–45. In particular, the ’546 patent similarly discloses a first curtain lamp with one LED in one light string, as well as a second curtain lamp, which provides further support for Petitioner’s proposed interpretation. Id. at 8:25–45. Although Patent Owner argues that Figures 7 and 8 disclose multiple LEDs and light strings in curtain lamps, other embodiments and claims explicitly indicate single components in a “curtain lamp.” “[T]here is a strong presumption against a claim construction that excludes a disclosed embodiment.” See In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1324 (Fed. Cir. 2011). Given that certain embodiments and claim 8 disclose a curtain lamp with one light string with one LED, we decline to interpret the claim to prohibit Petitioner’s interpretation. Additionally, we do not find that Petitioner’s claim interpretation renders the claim terms nonsensical or illogical. See Becton, 616 F.3d at 1255. Patent Owner asserts otherwise, arguing that Petitioner’s interpretation is based upon a “nonsensical” or “absurd[]” argument, there is no reason to have both a master and slave control unit to operate a single LED, and the interpretation renders most of the components superfluous. See PO Sur-reply 12; PO Resp. Supp. Br. 5. As discussed above, however, although the ’546 patent does not appear to provide any explanation for why there are master and slave control units to operate a single LED, the patent nevertheless discloses that in embodiments. This situation is also distinguishable from Becton, where “unequivocal language” of the claim recited “spring means ‘connected to’ the hinged arm,” such that interpreting the spring means and the hinged arm as the same structure would have rendered the claim nonsensical. Becton, 616 F.3d at 1254–55. Becton further found that interpreting the spring means and hinged arm as the same structure would be inconsistent with descriptions of the elements in the specification. Id. Here, in contrast, the ’546 patent Specification is replete with disclosures of a curtain lamp having one light string with one LED, and claim 8 is directed to the same. Accordingly, we adopt Petitioner’s interpretation of these claim elements.” slip op. at 36
- Strike new argumentNew argument consideredDecided for petitioner
“Although Patent Owner argues that Petitioner’s arguments in the Reply on “light strings” and “curtain lamp” as they relate to a single LED are improper, we do not agree. As Patent Owner acknowledges, the Petition and Dr. Schubert’s original declaration stated that a “curtain lamp” is “commonly understood to be one or more light strings.” See PO Sur-reply 12; see also Pet. 8; Ex. 1003 ¶ 37. Patent Owner did not contest Petitioner’s interpretation in its Response. See PO Resp. 15. Patent Owner did, however, argue that Kuang did not teach or suggest “light strings” in any form and therefore did not teach a “curtain lamp” under Petitioner’s definition of the same. PO Resp. 15–17. A petitioner reply may respond to arguments raised in a patent owner’s response under 35 U.S.C. § 42.23(b), and here Petitioner’s argument that a light string may have a single LED is properly presented in its Reply in response to Patent Owner’s arguments. Further, Patent Owner was not only aware that Petitioner had taken the position that a “curtain lamp” could be a single “light string,” but Patent Owner also did not dispute Petitioner’s interpretation.8 Our view, therefore, is that Petitioner’s argument that a curtain lamp may be a single LED is proper because it is corollary to Petitioner’s reply arguments on light strings. That is, Petitioner’s assertion follows from the reply arguments on light strings and the unopposed interpretation of curtain lamp as a single light string. Additionally, to the extent there could be any prejudice to Patent Owner by these light string and curtain lamp arguments, Patent Owner has had opportunities to address them by supplemental briefing.” slip op. at 32
Patent outcomesUS 8,884,546 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,884,546 - PTAB · May 7, 2025 · IPR2021-00906 · APJ Jameson Lee · IPR · Remand
On remand, the Board denied the motion to amend with proposed substitute claims 69, 70, 77, and 78 because the ’872 application did not provide written-description support.
RulingsRemand decision- RemandOther
“for the Federal Circuit. Papers 75–78. On February 3, 2025, the Federal Circuit issued a decision in which it stated: “We vacate and remand the Board’s decision with regard to claims 69 and 77, and their dependent claims, but otherwise affirm.” Paper 80.3 The formal mandate from the Federal Circuit was issued on March 12, 2025. Paper 79.” slip op. at 3
- 112 supportMotion to amend, deniedDenied
“Per the Federal Circuit’s instruction, the “first message” must come before the “another message” and “message preceding the another message.” However, the “first message” identified by Patent Owner, i.e., the RRC Connection Setup message, occurs after what Patent Owner identifies as the “another message,” i.e., the RRC Connection Request message. That mismatching sequence is evident from Figure 15 reproduced above.” slip op. at 8
NonePatents in suitUS 7,580,388 - PTAB · Apr 29, 2025 · IPR2024-01374 · APJ Miriam L Quinn · IPR · Institution
The Board instituted IPR on claims 1–30 and all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Sarbadhikari and Katagiri.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“court proceedings would proceed if a stay is requested because the court may determine whether or not to stay any individual case based on a variety of circumstances and facts beyond our control and to which the Board is not privy. Sand Revolution II, LLC v. Cont’l Intermodal Grp. - Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020) (informative) (“Sand Revolution”). Accordingly, we find that factor 1 is neutral.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“whether to institute review in light of a previously filed inter partes review challenging the same patent. See Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 15–16 (PTAB Sept. 6, 2017) (precedential). Principal among them is the first factor—“whether the same petitioner previously filed a petition directed to the same claims of the same patent.” Id. at 16. This factor has been extended to consider not only whether the petitioner is the same as a previous petitioner, but whether the petitioner has “a significant relationship” with the previous petitioner. See Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 at 9– 10 (PTAB Apr. 2, 2019) (precedential). Under Board persuasive authority, when two petitions challenge the same patent and “the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors.” Decision Granting Director Review, Videndum Prod. v. Rotolight, IPR2023-01218, Paper 12 at 5–6 (PTAB Apr. 19, 2024) (emphasis added). Petitioner and Sony are not the same party and there is no evidence that any of the Petitioner entities has a legally significant relationship with Sony. Patent Owner does not dispute this. Prelim. Resp. 1–4. Given these facts and the Director’s Videndum guidance, we decline to discretionarily deny the Petition due to the Sony IPR. See Videndum, Paper 12 at 5–6.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The Board may consider such factors as the types of problems encountered in the art, prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of workers in the field when determining the level of skill in the art. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). slip op. at 27
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“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) (2019). Under this standard, a claim is construed “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. However, only claim terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner and Patent Owner agree that all terms are to be construed to have their plain and ordinary meanings and no terms require express” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,877,266 - PTAB · Apr 23, 2025 · IPR2024-01373 · APJ Russell E Cass · IPR · Institution
The Board instituted IPR on claims 1–9 and 18–24 over all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In determining whether to exercise this discretion based on a related litigation, the Board assesses all relevant circumstances, including the merits, to balance considerations such as system efficiency, fairness, and patent quality. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”); NHK Spring Co. v. Intri- Plex Techs., Inc., IPR2018-00752, Paper 8 at 19–20 (PTAB Sept. 12, 2018) when determining whether to use our discretion to deny institution: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 5–6. In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). Of the ten claims challenged here, only two (claims 9 and 24) were challenged on the same ground in the Canon IPR—obviousness over Niikawa. Canon IPR, Paper 10 at 3. Thus, Patent Owner’s request fails under the first prong of Advanced Bionics. Moreover, the Board denied the Canon IPR largely due to the immediacy of an upcoming district court trial. Id. at 5–12. Thus, even if Patent Owner’s request did not fail under the first prong of Advanced Bionics, the request would fail under the second prong,” slip op. at 28
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“The Board considers and weighs several factors when deciding whether to institute review in light of a previously filed inter partes review challenging the same patent. See Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 15–16 (PTAB Sept. 6, 2017) (precedential). Principal among them is the first factor—“whether the same petitioner previously filed a petition directed to the same claims of the same patent.” Id. at 16. This factor has been extended to consider not only whether the petitioner is the same as a previous petitioner, but whether the petitioner has “a significant relationship” with the previous petitioner. See Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 at 9– 10 (PTAB Apr. 2, 2019) (precedential). The Director has found that when two petitions challenge the same patent and “the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors.” Videndum Prod. v. Rotolight, IPR2023-01218, Paper 12 at 5–6 (PTAB Apr. 19, 2024) (emphasis added). Petitioner and Sony are not the same party and the entities that” slip op. at 30
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“m) Conclusion regarding claim 9 For the reasons discussed above, we find at this stage of the proceeding, Petitioner demonstrates a reasonable likelihood of showing the combination of Niikawa and Enomoto teaches or suggests all of the limitations recited in claim 9. We further find, at this stage, that Petitioner articulates sufficient reasoning with rational underpinning to combine the teachings of Niikawa and Enomoto, and that the combination teaches (directly or indirectly) storing aberration correction algorithms in a database Accordingly, we find Petitioner demonstrates a reasonable likelihood of showing claim 1 is unpatentable as obvious over Niikawa and Enomoto.” slip op. at 57
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 7,612,805 - PTAB · Apr 23, 2025 · IPR2024-01372 · APJ Miriam L Quinn · IPR · Institution
The Board instituted IPR on claims 1–5 and 14–18 on all grounds, finding a reasonable likelihood that claim 1 would have been obvious over Niikawa and Enomoto.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In determining whether to exercise this discretion based on a related litigation, the Board assesses all relevant circumstances, including the merits, to balance considerations such as system efficiency, fairness, and patent quality. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”); NHK Spring Co. v. Intri- Plex Techs., Inc., IPR2018-00752, Paper 8 at 19–20 (PTAB Sept. 12, 2018) (precedential). We consider six factors as part of this balanced assessment when determining whether to use our discretion to deny institution: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and discretion, including the merits. Fintiv, Paper 11 at 5–6. In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). challenged on the same ground in the Canon IPR—obviousness over Niikawa. Canon IPR, Paper 9 at 3. Thus, Patent Owner’s request fails under the first prong of Advanced Bionics. Moreover, the Board denied the Canon IPR largely due to the immediacy of an upcoming district court trial. Id. at 5–11. Thus, even if Patent Owner’s request did not fail under the first prong of Advanced Bionics, the request would fail under the second prong, which considers Becton, Dickson8 factors (c) and (f). Advanced Bionics, Paper 6 at 10. Factor (c) “focuses on the record developed by the Office in previously reviewing art or arguments” and informs “the petitioner’s showing under factor[] . . . (f).” Id. Factor (f) considers the extent to which the facts and evidence in the Petition warrant reconsideration of the prior art. Becton, Dickenson, Paper 8 at 24–25.” slip op. at 27
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“whether to institute review in light of a previously filed inter partes review challenging the same patent. See Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 15–16 (PTAB Sept. 6, 2017) (precedential). Principal among them is the first factor—“whether the same petitioner previously filed a petition directed to the same claims of the same patent.” Id. at 16. This factor has been extended to consider not only whether the petitioner is the same as a previous petitioner, but whether the petitioner has “a significant relationship” with the previous petitioner. See Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 at 9– 10 (PTAB Apr. 2, 2019) (precedential). The Director has found that when two petitions challenge the same patent and “the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic (PTAB Apr. 19, 2024) (emphasis added). Petitioner and Sony are not the same party and the entities that constitute Petitioner contend that they “lack any legally significant relationship” with Sony. Pet. 86. Patent Owner does not dispute this. Prelim. Resp. 1–4. Given these facts and the Director’s Videndum guidance, we decline to discretionarily deny the Petition due to the Sony IPR. See Videndum, Paper 12 at 5–6.” slip op. at 29
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“discuss below, we find Petitioner provides sufficient reasoning with a rational underpinning to support at this stage of the proceeding Petitioner’s contentions regarding modifying Niikawa based on the teachings of Enomoto. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).” slip op. at 39
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 8,451,339 - Tesla, Inc. v. Autonomous Devices, LLCAll claims unpatentablePTAB · Apr 11, 2025 · IPR2023-01055 · APJ Barbara A Parvis · IPR · Remand
On remand, the Board held claim 12 unpatentable over Grotmol and Hickman and denied the motion to amend because proposed substitute claims 21–29 were unpatentable.
RulingsRemand decision- RemandOther
“Director Review and remanding for further proceedings. Paper 49 (“Acting Director’s Decision” or “DR Dec.”). That Decision states agreement “that the Board’s analysis of claim 12 did not make separate factual findings.” DR Dec. 2. The Decision instructs us on remand “to consider Patent Owner’s arguments as to claim 12 and as to proposed substitute claim 21” and “[r]egardless of the Board’s disposition on remand, the Board should explain more fully its findings as to claim 12 and proposed substitute claim 21.” Id.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Written Decision regarding the level of ordinary skill in the art. See generally DR Req. Upon consideration of the full record including the arguments in Patent Owner’s Request for Director Review, we maintain that determination here. More specifically, considering the subject matter of the ’344 patent, the background technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for an ordinary level of skill, except we decline to adopt “at least” as that language is vague and open-ended. See 2024 Final Dec. 10–11. Accordingly, with that exception, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“the differences as compared to claim 1, including those findings and determinations set forth in a section of the 2024 Final Written Decision titled “Overview—Claims 6, 11, and 12” (id. at 65–67) and in the sections titled “Claim 12” and “Conclusion—Claims 6, 11, and 12” (id. at 83–86). Further, based on the complete record now before us, including Patent Owner’s Request for Director Review, for the reasons given in our 2024 Final Written Decision and our additional reasons given herein, we determine that Petitioner has shown by a preponderance of the evidence that the Grotmol and Hickman combination teaches the limitations of claim 12.” slip op. at 24
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Director Review and remanding for further proceedings. Paper 49 (“Acting Director’s Decision” or “DR Dec.”). That Decision states agreement “that the Board’s analysis of claim 12 did not make separate factual findings.” DR Dec. 2. The Decision instructs us on remand “to consider Patent Owner’s arguments as to claim 12 and as to proposed substitute claim 21” and “[r]egardless of the Board’s disposition on remand, the Board should explain more fully its findings as to claim 12 and proposed substitute claim 21.” Id.” slip op. at 3
Patent outcomesUS 11,238,344 unpatentable§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,238,344 - Quectel Wireless Solutions Co. Ltd. v. Koninklijke Philips N.V.All claims unpatentablePTAB · Apr 1, 2025 · IPR2021-00563 · APJ Kevin F Turner · IPR · Remand
On remand, the Board held claim 9 unpatentable as obvious over Agin and Chen, finding Agin teaches the initial power adjustment and the combination teaches the offset determination.
RulingsRemand decision- RemandOther
“Reviewing Patent Owner’s arguments and Petitioner’s assertions, we remain persuaded that one of ordinary skill in the art would have applied the previous power level, i.e., the power level prior to the interruption, and also an offset according to the process illustrated in Agin’s Figure 2. Agin makes clear that its processes in Figure 2 are run “[i]f transmission is not resumed after a transmission interruption” and “[i]f transmission is resumed after a transmission interruption.” Ex. 1004 5:44–50. Figure 2 of Agin is used to make a determination of what the power level would be after an interruption, and that process should be followed, for the first transmission, as well as subsequent transmissions. Agin does not address a separate procedure for the initial transmission after an interruption because the process in Agin’s Figure 2 is generally applicable to all interruptions. This understanding comports with Dr. Ding’s testimony, discussed above, that we credit. See Ex. 2002, 115:13–16, 113:16–22, 110:13–16.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We disagree with Patent Owner’s arguments and continue to be persuaded that there was sufficient motivation to combine Agin and Chen. See FWD 25–26. Petitioner cites multiple rationales for the combination of Agin and Chen, including the benefits of Chen’s techniques, the predictability of such a combination, improvements in performance and transmission quality, reducing uncertainty, smoothing power levels, and argues that these approaches would have had a reasonable expectation of success. Pet. 17–19. Although Agin and Chen are directed to different problems, with different solutions, we discern no negative teaching that would proscribe their combination, and we can envision, via the arguments made in the Petition, combining aspects of each to improve the resulting system.” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Ding’s testimony, proposes that a person of ordinary skill in the art at the time of the invention would have had “at least a Bachelor’s degree in computer science, electrical engineering, computer engineering, or a related field, with 2-3 years of experience in wireless communication systems.” Pet. 5 (citing Ex. 1003 ¶ 25). Patent Owner does not dispute Petitioner’s identification of the level of skill in the art. PO Resp. 17. As such, we continue to adopt and apply Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision. See DI 5; FWD 6.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We disagree with Patent Owner’s arguments, as we did in the Final Written Decision. See FWD 25–26. We acknowledge the different aims and solutions detailed in Agin and Chen, but we are not persuaded that they are sufficiently different that aspects of Chen could not be utilized in Agin. We also acknowledge that Dr. Jackson’s testimony is clear and he testifies that Chen is sufficiently different and that the processes of Chen would not be readily adaptable to Agin. Weighing the testimonies of Drs. Ding and Jackson, we determine Dr. Ding’s testimony to be more persuasive as to the combination. For example, we concur with Dr. Ding that handover is directly related to communication interruptions in that the handover mechanism exists in order to try to avoid interruptions. Ex. 1003 ¶¶ 67–68, 102, 105–108; Ex. 1111 ¶ 47. Dr. Ding’s testimony is applied to support the conclusion that one of ordinary skill in the art would have been motivated to make the combination. Patent Owner asserts that such a characterization is misleading (PO Sur-reply 20), but we are persuaded that Dr. Ding’s testimony demonstrates overlapping aspects of the disclosures of Agin and Chen and support the Petition’s rationales for their combination.” slip op. at 30
Patent outcomesUS 8,195,216 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,195,216 - Hanshow America Inc. / Hanshow Technology Co., Ltd. v. Ses-Imagotag Inc.No claims unpatentablePTAB · Mar 28, 2025 · IPR2024-00208 · APJ Terrence W Mcmillin · IPR · Final written decision
Claims 1–20 were not shown unpatentable because Wu and the asserted combinations did not teach or suggest the claimed acquisition and transmission of a sequence of shelf label identifiers.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedDecided for patent owner
“identifying information and the label location information[,]’ by extrapolating from the ESL that is already installed as required by steps S104 and S106.” Pet. 16 (citing Ex. 1003, 4:26-28; Ex. 1009 ¶ 81) (third and fourth alterations in original). There is no explanation or reasoning provided in the Petition to support this assertion. See id. We can find no support for this assertion that the method described in Wu requires this undisclosed step or that it could not otherwise possibly work14 to create the relationship between the label identifying information and the label location information of the added shelf label by extrapolation from the ESL that is already installed. The only evidence cited in support of this assertion is a short passage in Wu (Ex. 1003, 4:26–28) and paragraph 81 of the Declaration of Dr. Tentzeris (Ex. 1009). This short passage in Wu provides that, “[i]n step S106, the deploying device 130 or the controlling device 120 creates the relationship between the label identifying information and the label location information.” Ex. 1003, 4:26–28. This passage does not support Petitioner’s assertion. The cited paragraph in the Declaration of Dr. Tentzeris provides: 81. In my opinion, a POSITA would understand that, without acquiring this second identifier in the sequence (which 14 Prior art patents enjoy a presumption of enablement. Apple Inc. v. Corephotonics, Ltd., 861 Fed. Appx. 443, 450 (Fed. Cir. 2021). Wu is presumed to enable what it discloses. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003) (“a presumption arises that both the claimed and unclaimed disclosures in a prior art patent are enabled”). However, even without applying this presumption, Wu provides a disclosure that establishes how to create the relationship between the label identifying information and the label location information of the added shelf label by extrapolation or interpolation without the reading device acquiring the label identifying information of the adjacent shelf label which is already installed. See Ex. 1003, 3:59–4:28. is explicitly shown in FIG. 3B of Wu), the reading device could not possibly “create[] the relationship between the label identifying information and the label location information[,]” by extrapolating from the ESL that is already installed as required by steps S104 and S106. Ex. 1003, [4:26-28]. Ex. 1009 ¶ 81. Dr. Tentzeris does not support his opinion with any explanation, reasoning, facts or data, here or elsewhere. This unsupported, conclusory testimony is entitled to little or no weight. See cxLoyalty, Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1378 (Fed. Cir. 2021) (“We do not accord weight to conclusory expert testimony.”); 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.”). There is no evidence that supports Petitioner’s assertion that a skilled artisan would understand from Wu that the reading device acquires the label identifying information of a second shelf label that is already installed and adjacent to the added shelf label.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person having ordinary skill in the art relating to the subject matter of the ’709 Patent as of the Critical Date (“POSITA”) would have had at least a Master of Science Degree in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field (or a similar technical Master’s degree, or higher degree). Pet. 6 (citing Ex. 1009 ¶ 31). Petitioner further contends, in the alternative, that “a POSITA would have had a Bachelor’s Degree (or higher degree)” in one of the fields noted above, with “two or more cannot demonstrate unpatentability of any claim of the ’709 Patent because Petitioners fail to identify a ‘reading device’ that acquires and transmits the ‘sequence of label identifiers’ recited by the claims.”). Our decision is based on our determination that Petitioner has failed to establish that the cited art teaches or suggests acquiring and transmitting a sequence of label identifiers as recited in the independent claims of the ’709 patent. years of work experience” in one of those fields. Id. According to Petitioner, “[a]dditional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” Id. Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art. PO Resp. 16. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner, as it is not disputed by the Patent Owner and is consistent with the ’709 patent and the asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“necessary to resolve the controversy involved in this IPR, and the terms of the ’709 Patent should be given their ordinary and customary meaning.” Pet. 4. In the claim construction section of its Response, Patent Owner discusses the claim terms “location(s)” and “planogram.” See PO Resp. 16– 29. As discussed in our analysis below, we determine that Petitioner has failed to show that the prior art teaches or suggests certain limitations of the claims that do not include either the term “location(s)” or “planogram.” Accordingly, no need exists to expressly construe any claim terms to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Our decision relies on the plain and ordinary meaning of the limitations on which our decision is based and no need exists to expressly construe any claim term to make our decision.8” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Based on the entire record of this proceeding, we find that Wu does not teach or suggest: (1) “acquiring, by a reading device, a sequence of label identifiers . . . comprising a label identifier of an adjacent shelf label which is adjacent to the added shelf label” as recited in independent claim 1: (2) “transmitting, by the reading device, the sequence of label identifiers to the computer system” as recited in independent claim 1: (3) “acquiring, by a reading device, a sequence of label identifiers . . . comprising a label identifier of an adjacent shelf label which is adjacent to the added shelf label” as recited in independent claim 10; (4) “transmitting, by the reading device, the sequence of label identifiers to the computer system” as recited in independent claim 10: (5) “the computer system being configured to receive, from the reading” slip op. at 37
Patent outcomesUS 11,010,709 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,010,709
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.