- Tesla, Inc. v. Iqar Inc.All claims unpatentablePTAB · Sep 18, 2025 · IPR2024-00630 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 1–16 are unpatentable as anticipated by Koebler and obvious over Koebler alone and in combination with other references.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995) (citing 35 U.S.C. § 120). Section 112 requires, inter alia, that the specification contain a written description of the claimed invention. 35 U.S.C. § 112(a). In determining whether the written description requirement is met, we consider “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). This analysis requires “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. Thus, “the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. For example, the analysis must consider “the existing knowledge in the particular field, the extent and content of the prior art, the maturity of the science or technology, [and] the predictability of the aspect at issue.” Id. (alteration in original) (quoting Capon v. Eshhar, 418 F.3d 1349, 1359 (Fed. Cir. 2005)). “While a prior application need not contain precisely the same words as are found in the asserted claims, the prior application must indicate to a person skilled in the art that the inventor was ‘in possession’ of the invention as later claimed.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (citations omitted); see also Purdue Pharma LP v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (“In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.”). However, “it is the specification itself that must demonstrate possession. And while the description requirement does not demand any particular form of disclosure . . . , a description that merely renders the invention obvious does not satisfy the requirement.” Ariad, 598 F.3d at 1352 (citations omitted); see also Lockwood v. Am. Airlines, 107 F.3d 1565, 1572 (Fed. Cir. 1997) (“While the meaning of terms, phrases, or diagrams in a disclosure is to be explained or interpreted from the vantage point of one skilled in the art, all the limitations must appear in the specification. The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.”).” slip op. at 7
- Skill levelSkill level board ownDecided for petitioner
“The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Best Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (quoting Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007)). “The patent’s purpose can also be informative.” Id.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Initially, we note that, although Petitioner presents a definition for “traction” in its Reply (see Pet. Reply 10), Dr. Morellas agreed with Patent Owner’s proposed interpretation during his deposition: Q. What would a person having ordinary skill in the art understand the word “traction” to mean? A. It would mean the grip that the -- that the tire has with the road. Q. So when the tire is gripping the road, the vehicle will have traction; correct? A. Correct. Q. But if the wheels are spinning freely and not gripping the road, the vehicle has no traction; correct? A.· Correct. Ex. 2031, 36:8–17. Accordingly, we adopt Patent Owner’s interpretation of “traction” to be a measure “of the friction between the vehicle’s drive wheels and the road surface” such that “a vehicle’s wheels have ‘traction’ when wheel rotation acts to propel the vehicle along the roadway” and “[t]he vehicle’s wheels lose ‘traction’ when they spin freely relative to the road and thus are no longer acting to propel the vehicle along the roadway.” See PO Resp. 27; see also Tr. 18:4–5 (Petitioner’s counsel stating that “the ultimate disposition doesn’t matter which definition [of ‘traction’ the Board] adopt[s]”).” slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“2. Anticipation “Under 35 U.S.C. § 102 a claim is anticipated ‘if each and every limitation is found either expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). A reference inherently discloses an element of a claim “if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citing Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, 593 F.3d at 1332 (quoting Cont’l Can, 948 F.2d at 1269).” slip op. at 28
Patent outcomesUS 10,850,616 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,850,616 - PTAB · Sep 15, 2025 · IPR2025-00632 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claims 1, 2, 7–9, 11, 12, and 20–24 are obvious over Yamaguchi-727.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Cerebrum Sensor Technologies, Inc. (“Patent Owner”) timely filed a Preliminary Response. Paper 9 (“Prelim. Resp.”).1 Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on our review of the record, we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims.” slip op. at 2
- BurdenInstituted
“We disagree. Positioning module 6 to face a “predetermined direction” is a form of preventing movement that falls within the scope of limitation 1b. Moreover, Yamaguchi-727 uses a method for preventing movement of its module 6 in its housing 20, silicone potting material, that is expressly recognized by the Specification of the ’421 patent when it states: “A common technique used to assist in fixturing the electrical sensor device 40 known within the automotive industry is to fill the internal cavity with a coating material such as a neutral silicone or the like for purposes of retaining placement position.” Ex. 1001, 13:56–60. Although the Specification also asserts that the sensor assemblies disclosed in the 421 patent “do not use or require the use of any such coating or filing agents or materials for any fixturing of the electrical sensor device 40,” id. at 13:61–64, limitation 1b merely requires that the “sensor device . . . is disposed within the internal cavity and attached therein to prevent movement of the device within the internal cavity,” id. at 30:25–27. Absent a persuasive argument to the contrary, we preliminarily conclude that Yamaguchi-727’s use of potting material to hold its module 6 in place within its housing 20 meets the requirements of limitation 1b. Both parties are encouraged to adduce intrinsic evidence relating to the meaning of limitation 1b at trial. For all the reasons set forth above, we find that Petitioner has established a reasonable likelihood of proving the Yamaguchi-727 renders claim 1 unpatentable as obvious. 2. Dependent Claims 2, 7–9, 11, 12, and 20–24 Petitioner identifies the portions of Yamaguchi-727 that teach the limitations introduced in dependent claims 2, 7–9, 11, 12, and 20–24, all of which ultimately depend from claim 1. Pet. 32–40. Patent Owner relies upon its argument that Petitioner’s showing for claim 1 is deficient as the reason why Petitioner’s challenge to dependent claims 2, 7–9, 11, 12, and 20–24 fails. We reject this argument for the reasons stated in Part II.C.1 above. Based on our review of Petitioner’s otherwise uncontested argument and evidence cited in support, we find that Petitioner also establishes a reasonable likelihood of proving that Yamaguchi-727 renders dependent claims 2, 7–9, 11, 12, and 20–24 unpatentable as obvious. D. Remaining Challenges” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner complies with the requirement of identifying “[h]ow the claim language is to be construed” by setting forth proposed interpretations of various claim terms in the table above.7 Both cases cited by Patent Owner relate to an issue presented by a petitioner’s alleged inconsistent handling of whether a claim term is subject to interpretation as a means-plus-function element under 35 U.S.C. § 112(f). Orthopediatrics Corp. v. K2M, Inc., IPR2018-01546, Paper 10 at 11 (PTAB Feb. 14, 2019); 10x Genomics, Inc. v. President and Fellows of Harvard College, IPR2023- 7 Neither party has identified any claim language that might invoke interpretation as a means-plus-function limitation, and we discern no such claim language. Additionally, we do not imply that a petitioner must always propose express interpretations for specific claim language to comply with Rule 42.104(b)(3). Rather, we only note that Petitioner has, by any measure, complied by expressly proposing interpretations for identified claim language.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We disagree. Positioning module 6 to face a “predetermined direction” is a form of preventing movement that falls within the scope of limitation 1b. Moreover, Yamaguchi-727 uses a method for preventing movement of its module 6 in its housing 20, silicone potting material, that is expressly recognized by the Specification of the ’421 patent when it states: “A common technique used to assist in fixturing the electrical sensor device 40 known within the automotive industry is to fill the internal cavity with a coating material such as a neutral silicone or the like for purposes of retaining placement position.” Ex. 1001, 13:56–60. Although the Specification also asserts that the sensor assemblies disclosed in the 421 patent “do not use or require the use of any such coating or filing agents or materials for any fixturing of the electrical sensor device 40,” id. at 13:61–64, limitation 1b merely requires that the “sensor device . . . is disposed within the internal cavity and attached therein to prevent movement of the device within the internal cavity,” id. at 30:25–27. Absent a persuasive argument to the contrary, we preliminarily conclude that Yamaguchi-727’s use of potting material to hold its module 6 in place within its housing 20 meets the requirements of limitation 1b. Both parties are encouraged to adduce intrinsic evidence relating to the meaning of limitation 1b at trial. For all the reasons set forth above, we find that Petitioner has established a reasonable likelihood of proving the Yamaguchi-727 renders claim 1 unpatentable as obvious. 2. Dependent Claims 2, 7–9, 11, 12, and 20–24 Petitioner identifies the portions of Yamaguchi-727 that teach the limitations introduced in dependent claims 2, 7–9, 11, 12, and 20–24, all of which ultimately depend from claim 1. Pet. 32–40. Patent Owner relies upon its argument that Petitioner’s showing for claim 1 is deficient as the reason why Petitioner’s challenge to dependent claims 2, 7–9, 11, 12, and 20–24 fails. We reject this argument for the reasons stated in Part II.C.1 above. Based on our review of Petitioner’s otherwise uncontested argument and evidence cited in support, we find that Petitioner also establishes a reasonable likelihood of proving that Yamaguchi-727 renders dependent claims 2, 7–9, 11, 12, and 20–24 unpatentable as obvious. D. Remaining Challenges” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,835,421 - PTAB · Aug 25, 2025 · IPR2025-00631 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1–3, 5, 7–9, 11–13, and 15–22 on all five asserted § 103 grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’027 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., 1–3, 5, 7–9, 11–13, and 15–22) of the ’027 patent, based on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have “possessed an undergraduate degree in chemistry, polymers, materials science, chemical engineering (or related field) and one to two years of experience with constructing and manufacturing tires, tire patches, tire decals/stickers and/or the like.” Pet. 8 (citing Ex. 1003 ¶¶ 6–11). According to Petitioner, “Additional education could compensate for less practical experience. Conversely, additional practical experience could compensate for less education.” Id. Patent Owner does not provide an alternate definition, but, “Patent Owner does not acquiesce to, and reserves the right to address, [Petitioner’s] definition of a POSA.” Prelim. Resp. 6 n.6. Petitioner’s proposed definition appears to be consistent with the disclosure of the ’027 patent, and we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself may “reflect[] an appropriate level” of ordinary skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“We disagree with Patent Owner’s contentions that these disclosures indicate that Wilson’s patch would not meet the construction of “barrier material composition.” None of these disclosures even suggests that the base of Wilson’s patch is rigid as Patent Owner suggests. To begin with, the fact that the housing is “more rigid” provides no information about the absolute rigidness of the patch. See Ex. 1009, 9:16–21. As for the disclosure that the patch is contoured (id. at 3:35–67), Patent Owner provides only attorney argument to support its contention that the contour demonstrates that Wilson’s patch must be so rigid that it cannot be meet the claim limitation. In contrast, Petitioner demonstrates that Wilson discloses using the exact same materials described in the challenged patent (see Ex. 1001, 6:33–58 (noting “[e]lastomeric materials useful for forming the intermediate layer 24 include but are not limited to gum rubber, vulcanized natural rubber SBR . . . or comparable materials”); Ex. 1009, 3:49–55 (noting the patch may be constructed from natural rubber (NR), a preferred mixture of chlorobutyl rubber and natural rubber (CR/NR), or a preferred mixture of SBR and natural rubber (SBR/NR)), and provides detailed testimony from its expert to support its contentions (see Ex. 1003 ¶¶ 114–119). On the current record, we find Petitioner’s reasoning and evidence to be persuasive, and find that Petitioner has shown sufficiently that Willson discloses or teaches this limitation.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,124,027 - Mastercard Incorporated / Mastercard International Incorporated v. Ov Loop, Inc.All claims unpatentablePTAB · Aug 7, 2025 · IPR2023-01289 · APJ James A Tartal · IPR · Remand
On remand, the Board maintained that claims 1–33 are unpatentable as obvious over Collinge, including claims 10–13 and 27–30.
RulingsRemand decision- RemandDecided for petitioner
“Decision which components of Collinge “the Board relied on for claim 10’s limitation ‘receiving [at the remote computer system] an authorization request to authorize the transaction from the POS terminal.’” Remand Order 3. The Order instructs: “[o]n remand, the Board shall consider Patent Owner’s arguments as to claims 10 and 27, and their dependent claims. Regardless of the Board’s disposition on remand, the Board should address Patent Owner’s arguments and explain more fully its findings as to claims 10 and 27.” Id. The Remand Order further states that “this case is remanded to the Board for consideration of the arguments made in Patent Owner’s DR Request” and that we “should point more specifically to where in Collinge the argued limitation is taught, if anywhere, and which components of Collinge satisfy the limitation, if any.” Id. As instructed, in this Decision we consider Patent Owner’s arguments raised in the DR Request as to claims 10 and 27, and their dependent claims.3 As explained in detail below, and consistent with our determination in the Final Written Decision, we conclude Petitioner establishes by 3 We consider the arguments presented in Patent Owner’s DR Request in the context of arguments presented in Patent Owner’s Response, as arguments on the merits may be considered waived unless presented in that Response. See Paper 16, 9 (explaining that “Patent Owner is cautioned that any arguments not raised in the response may be deemed waived”). a preponderance of the evidence that the subject matter of claims 10–13 and 27–30 of the ’171 patent would have been obvious over Collinge.4” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Ex. 1011 ¶ 77. In short, although paragraph 77 of Collinge is cited in the Petition and addresses both issuer processing server 308 and acquirer processing server 312, Petitioner relies on and shows that issuer processing server 308 (not acquirer processing server 312) receives “an authorization request to authorize the transaction from the POS terminal,” as required by claim 10. Pet. 58–59; Pet. Reply 16–18; DR Req. Opp. 2–4. Furthermore, there is no dispute that in Collinge the “authorization process” is performed at issuer processing server 308 in response to a request it receives. Ex. 1011 ¶ 77 (“The issuer processing server 308 may then validate the application cryptogram”). Claim 10 requires “performing an authorization process” including “receiving an authorization request to authorize the transaction from the POS terminal” at the remote computer system. We recognize that acquirer processing server 312 facilitates receiving transaction information from the POS terminal and communicating an authorization request to the issuer processing server 308. See Ex. 1011 ¶ 77. It is merchant point-of-sale terminal 120, however, that transmits “the received payment information and any additional transaction information (e.g., transaction amount, merchant identifier, etc.) to the acquirer processing server 312,” so that “acquirer processing server 312 may then generate and submit an authorization request for the financial transaction” through payment network 124 to issuer processing server 308 for validation. Id. Thus, Petitioner shows that in Collinge the request received by the issuer processing server 308 is “from” the POS terminal, as required by claim 10. See Pet. 58–6-; Ex. 1011, ¶ 77, Fig. 7.” slip op. at 20
- Expert testimonyPetitioner expert creditedDecided for petitioner
“’095 Provisional, reproduced above). Reply 17–18 (citing Ex. 1009 ¶ 46, Fig. 7). We credit Dr. Fiske in this regard, who explains that “the functionality performed” in the components in the “Blue-Box Structures,” that is Collinge’s Cloud Systema and Issuer System, “share a ‘connection 178’ therebetween,” as shown in Figure 7 of the ’095 Provisional. Ex. 1050 ¶ 43. We also considered Dr. Easttom’s opinion that Collinge’s Cloud System 110 and Issuer System 108 (see Ex. 1011, Fig. 7) are not one computer system because, in his view, each item “is (one or more) separate systems that operated independently from the others.” Ex. 2009 ¶ 150; see also PO Resp. 36–37 (arguing that Petitioner presents “no evidence” to show that allegedly “distinct” components are part of one remote computer system). We find Dr. Easttom’s opinion untenable because it is contrary to the express disclosure of Collinge, which demonstrates that, rather than operating “independently,” Cloud System 110 and Issuer System 108, and specifically remote-SE system 110 and issuer processing server 308, are connected and operate together through that connection, remotely from the mobile device. The Final Written Decision expressly agrees with and adopts Petitioner’s contentions with regard to claim 10, and we maintain that position here. See FWD 56–59.” slip op. at 26
Patent outcomesUS 10,032,171 unpatentable§ 103 obviousnessPatents in suitUS 10,032,171 - Tesla, Inc. v. Iqar Inc.Some claims unpatentablePTAB · Jul 25, 2025 · IPR2024-00545 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 1–6, 8–15, 17, and 18 are unpatentable as obvious over Neiss or Neiss and Hirasago; claims 7 and 16 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) would have had “a bachelor’s degree in electrical engineering, computer engineering, mechanical engineering (including automotive engineering), civil engineering (transportation systems), physics, or a related field, and at least four years of experience (or the academic equivalent) in the field of transportation systems.” Pet. 2–3. Petitioner contends that “[a]dditional education could substitute for professional experience, and vice versa.” Id. at 3 (citing Ex. 1003 ¶¶ 1–19, 24–26; Ex. 1004). Patent Owner “does not dispute” Petitioner’s definition of the level of ordinary skill. See generally PO Resp. We find Petitioner’s definition to be consistent with the problems and solutions disclosed in the patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., In re GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We disagree with Patent Owner’s interpretation of column 13, lines 40–44 of the ’161 patent to mean that a route may not have both an ending position or an intermediate position, but will have at least one of these positions. See PO Resp. 21. Patent Owner interprets “typically” in “[t]he route used by the power management device typically includes a starting position . . . , an ending position, . . . , and any intermediate positions between the initial and the final positions” to apply to either “an ending position” or “any intermediate positions” (that is, an intermediate destination) but not to both. We see no grammatical reason to limit “typically” in this manner. Rather, the plain meaning of the quoted sentence suggests that, although not typical, a route may not contain an ending position, be that a final position or an intermediate position.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner has not explained adequately how a driver’s previously driven speed or the speed limit is an efficient speed. Rather than explaining how the Schramm-Clapper system would sum efficient speeds, Petitioner merely asserts that “the set speeds for the energy-optimum route’s segments correspond to a plurality of efficient speeds.” Pet. 78 (emphasis omitted). Petitioner’s witness, Dr. Papanikolopoulos, makes substantially the same assertion. See Ex. 1003 ¶ 263. But neither Petitioner nor its witness explains adequately how a previously driven speed or the speed limit is an efficient speed. Patent Owner presents persuasive arguments as to why these speeds are not efficient. See PO Resp. 32–33 (citing Ex. 2003 ¶¶ 198–204, 208–214). Patent Owner’s contentions are supported by Dr. Hoff’s testimony. See, e.g., Ex. 2003 ¶¶ 211–218. Stated differently, although Petitioner explains how the Schramm-Clapper system would select the best summation of calculated energy values required to travel at selected speeds from among Schramm’s routes, Petitioner has not explained sufficiently how the selected speeds are efficient speeds. For the foregoing reasons, on this record, Petitioner has not shown, by a preponderance of the evidence, that claim 1 or its dependent claims 3 and 6–9 would have been obvious in view of the combination of Schramm and Clapper. Petitioner relies on the same contentions regarding the identical language recited in independent claim 10 (see Pet. 93), and so, for the same reasons, has failed to show, by a preponderance of the evidence, that claim 10 or its dependent claims 12, 13, and 15–18 would have been obvious in view of the combination of Schramm and Clapper.” slip op. at 36
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We agree with Patent Owner that Petitioner has not explained adequately how a driver’s previously driven speed or the speed limit is an efficient speed. Rather than explaining how the Schramm-Clapper system would sum efficient speeds, Petitioner merely asserts that “the set speeds for the energy-optimum route’s segments correspond to a plurality of efficient speeds.” Pet. 78 (emphasis omitted). Petitioner’s witness, Dr. Papanikolopoulos, makes substantially the same assertion. See Ex. 1003 ¶ 263. But neither Petitioner nor its witness explains adequately how a previously driven speed or the speed limit is an efficient speed. Patent Owner presents persuasive arguments as to why these speeds are not efficient. See PO Resp. 32–33 (citing Ex. 2003 ¶¶ 198–204, 208–214). Patent Owner’s contentions are supported by Dr. Hoff’s testimony. See, e.g., Ex. 2003 ¶¶ 211–218. Stated differently, although Petitioner explains how the Schramm-Clapper system would select the best summation of calculated energy values required to travel at selected speeds from among Schramm’s routes, Petitioner has not explained sufficiently how the selected speeds are efficient speeds.” slip op. at 36
Patent outcomesUS 8,972,161 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,972,161 - Posco Co., Ltd. v. ArcelormittalInstitutedPTAB · Jul 23, 2025 · IPR2025-00371 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–25 based on all petitioned grounds, finding a reasonable likelihood that POSCO would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. 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. We hereby institute an inter partes review as to claims 1–25 of the ’227 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (POSITA) “would have had an undergraduate degree in materials science, manufacturing engineering, mechanical engineering, or equivalent knowledge, training, or experience, with two years of experience working in metallurgy.” Pet. 6 (citing Ex. 1003 ¶ 15). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’227 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any claim constructions. Pet. 3. We do not discern a need to construe explicitly any claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“35 U.S.C. § 103(a) as obvious over Takagi and Cornette, citing the Declaration of Dr. Miles for support. Pet. 1, 6–49 (citing Ex. 1003) (Petitioner’s Ground 1A). a. Claim 1 Petitioner argues that Takagi and Cornette teach or suggest each recitation of claim 1. Pet. 6–31. Petitioner argues, for example, that the preamble of claim 1 is not limiting or, alternatively, imparts no structural distinction from Takagi. Id. at 20–23 (citing, e.g., Ex. 1003 ¶ 48). Petitioner further argues that Takagi and Cornette teach forming or hot stamping to arrive at their products. Id. at 23 (citing, e.g., Ex. 1016 ¶ 36 (Takagi referring to “form[ing]” its products shape); Ex. 1014, 9–11 (Cornette referring to “hot stamping”); Ex. 1003 ¶ 48. Petitioner argues that Takagi teaches a strip of base steel having a first and second side. Id. at 23–24 (citing, e.g., Ex. 1003 ¶ 49; Ex. 1016 ¶¶ 13, 36. Petitioner argues that Takagi teaches a coating that is a “diffusion layer” having five phases as depicted by Takagi Figure 2A and explained by Takagi Table 1 (Takagi Fig. 4). Id. at 24–30 (citing, e.g., Ex. 1003 ¶¶ 50–59; Ex. 1016 ¶ 20, Fig. 2A). Petitioner argues that Takagi alone or as modified by Cornette teaches a coating thickness greater than than 30 µm. Id. at 30–31; Ex. 1014, 9; Ex. 1016 ¶ 35; Ex. 1003 ¶¶ 60–61. Petitioner explains why a person having ordinary skill in the art would have had reason to combine teachings of Takagi and Cornette with a reasonable expectation of success. Pet. 11–20 (citing, e.g., Ex. 1003 ¶¶ 31–47; Ex. 1016 ¶¶ 19–37, 47; Ex. 1014, 9; Ex. 1025, 5:17–20; Ex. 1026, 7; Ex. 1034 ¶ 13; Ex. 1055 ¶¶ 2, 7, 14–15, 18, Fig. 3). Based on our review and consideration of the current record, we determine that the information presented sufficiently supports, for purposes of institution, Petitioner’s assertions that Takagi and Cornette teach or suggest each limitation of claim 1. See Pet. 6–31. We therefore determine Petitioner has met its burden to show a reasonable likelihood it would prevail in demonstrating that claim 1 would have been obvious over Takagi and Cornette.” slip op. at 12
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,326,227 - Posco Co., Ltd. v. ArcelormittalInstitutedPTAB · Jul 23, 2025 · IPR2025-00370 · APJ Brian D Range · IPR · Institution
The Board instituted IPR of claims 1–30 on all twelve asserted obviousness grounds, finding a reasonable likelihood that POSCO would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. 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. We hereby institute an inter partes review as to claims 1–30 of the ’602 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’602 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any claim constructions. Pet. 3. We do not discern a need to construe any claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200” slip op. at 9
- BurdenInstituted
“determine that the information presented sufficiently supports, for purposes of institution, Petitioner’s assertions that Takagi and Cornette teach or suggest each limitation of claim 1. See Pet. 6–33. We therefore determine Petitioner has met its burden to show a reasonable likelihood it would prevail in demonstrating that claim 1 is obvious over Takagi and Cornette.” slip op. at 12
Claim constructioncites KSR · GrahamPatents in suitUS 10,961,602 - Tesla, Inc. v. Iqar Inc.Some claims unpatentablePTAB · Jul 21, 2025 · IPR2024-00543 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 1–7, 9–17, 19, and 20 are unpatentable as obvious; claims 8 and 18 were not shown unpatentable because Newstrom’s database was not shown to be remote.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Patent Owner does not contest Dr. Morellas’s proposed definition or proffer a definition of its own. See generally PO Resp.; see also Ex. 2007 ¶ 43 (setting forth a substantially similar definition as Dr. Morellas). We find Dr. Morellas’s unopposed definition to be consistent with the problems and solutions disclosed in the patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., In re GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for patent owner
“We disagree with Patent Owner’s assertion that claim 1 requires that a route from the vehicle’s current position to a final destination must be known. See PO Resp. 7. Initially, claim 1 does not recite “destination.” Instead, claim 1 recites only “determining a segment of a vehicle route.” Ex. 1001, 27:44 (emphasis added). Nor does the ’399 patent specification require the interpretation proffered by Patent Owner. Notably, the ’399 patent discloses that the power management device may rely on historical route information to optimize the energy used to travel each segment of a route. Ex. 1001, 17:39–43, 17:64–67. Such reliance on historical data beneficially reduces the amount of required computing power. Id. at 18:5–9. Under this approach, “the location of the vehicle is periodically determined” and “used to determine[] a historical segment corresponding to the current location.” Id. at 18:30–33 (emphasis added). If the vehicle has moved into a new route segment, the historical data is queried to determine the most efficient speed to travel for the current segment. Id. at 18:39–56. Thus, the ’399 patent explicitly discloses calculating and applying power to a vehicle based on the route segment in which the vehicle is currently traveling. See id. at 18:64–67 (“The flowchart shown in FIG. 5 illustrates a continuous process, in which the power management device can determine a probable optimal speed as the current segment changes (e.g., as the vehicle moves).”), Fig. 5. Furthermore, the ’399 patent explains that “[t]he route used by the power management device typically includes a starting position . . . , an ending position, . . . , and any intermediate positions between the initial and the final positions.” Id. at 14:6–10 (emphasis added). Notably, the ’399 patent sometimes refers to the “entire route,” indicating that use of “route” in the claims does not necessarily mean the entire route. Indeed, the ’399 patent explains that, “[i]n some variations, the entire route (or the entire predicted route) may be divided up into N segments” and “[i]n some variations, probable optimal speeds may be identified for the entire route.” Ex. 1001, 14:38–39, 19:1–2 (emphases added). This strongly suggests that, in some other variations, the entire route is not divided into segments and optimal speeds are not identified for the entire route, further indicating that the recited “route” is not the entire path the vehicle will take. Therefore, we find that the ’399 patent contemplates routes that, although not typical, do not include an ending position. Moreover, to the extent a destination is required, the ’399 patent discloses that the destination can be derived based on the vehicle’s location or driving history, and there can be multiple “likely destinations” and the system can “continuously infer the vehicle’s destination” and the probable destination “may constantly change to revise the destination” while the vehicle is traveling along the route. Ex. 1001, 12:16–59. Contrary to Patent Owner’s arguments, neither the claim language nor the specification of the ’399 patent requires the route be predetermined or extend from the vehicle’s current position to a final destination.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“have been obvious in view of Hongo, Obradovich, and Niki. Pet. 4–62. In support of its showing, Petitioner relies upon the Morellas Declaration. Id. (citing Ex. 1003). We have reviewed the parties’ briefs and the evidence of record and determine that, for the reasons explained below, Petitioner has shown, by a preponderance of the evidence, that claims 1, 2, 5, 6, 9–12, 15, 16, 19, and 20 would have been obvious in view of Hongo, Obradovich, and Niki and that Petitioner has set forth reasoning with rational underpinning why it would have been obvious to combine the teachings of these references.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“limiting, Hongo and Niki support Petitioner’s contentions. We determine that Petitioner sets forth reasoning with rational underpinning as to why a person having ordinary skill in the art would have combined the teachings of Hongo and Niki. See, e.g., Pet. 21–23 (arguing that the modification “would have involved choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success” and “Niki’s teachings and/or suggestions improve vehicle control in the Hongo vehicle”).” slip op. at 14
Patent outcomesUS 10,882,399 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,882,399 - Tesla, Inc. v. Iqar Inc.All claims unpatentablePTAB · Jul 14, 2025 · IPR2024-00499 · APJ Brent M Dougal · IPR · Final written decision
Claims 1–17 are unpatentable: claims 1–16 as obvious over Kudo-325 and Kudo-066, and claim 17 as obvious over those references and Tryon.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Thus, for all of the above reasons, we decline to construe “data, regarding multiple route segments” to require the data include information regarding the route the vehicle traveled between the starting and end points of the route segment. Rather, this is but one example of the type of data included within the scope of the claim. We further make final our preliminary finding that the claim explicitly allows for data, regarding a route segment to be stored in the memory at “different points in time along a route segment.” We determine that no other terms need to be construed. See Realtime” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“regarding route segments because it does not identify “what occurred—or what path the vehicle traveled—between the different nodes in Kudo 325’s transition state data.” PO Resp. 9. However, we have rejected herein Patent Owner’s implicit claim construction argument that such additional information is required. Though the exact the path traveled between a starting and end point is data regarding a route segment, the starting and end points are also data regarding a route segment. As acknowledged by Patent Owner, Kudo 325’s transition state data includes the starting and end points of route segments, as well as “a list of (or pointers to) all other nodes to which the vehicle previously traveled from that node.” PO Resp. 9 (citing Ex. 1004 ¶ 93). After our review of the evidence and arguments, summarized above, we determine that Petitioner has shown by a preponderance of the evidence that the combination teaches or suggests “data, regarding multiple route segments,” and “data, regarding multiple sequences of route segments” as required by claim 1. d) Conclusion For the reasons discussed above, we determine that Petitioner has shown by a preponderance of the evidence that the combination of Kudo- 325 and Kudo-066 teaches or suggests claims 1, 15 and 16.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“be motivated to implement Kudo-325’s historical accumulation database at the server. Pet. 73, 68, 70. Petitioner argues that Kudo-325 teaches that “a part of the functions that a car navigation system has may be provided in a server on a network.” Id. at 68 (quoting Ex. 1004 ¶ 75). Petitioner further argues that doing so would beneficially allow remotely stored historical data to be accessible to multiple vehicles. Id. at 70 (citing Ex. 1003 ¶ 203). Petitioner argues that housing this information at the server is a known technique and would yield predictable results. Id. (citing Ex. 1003 ¶ 204). Petitioner argues that Kudo-325 teaches storing sensor data samples including historical data at the historical accumulation database. Pet. 73–74 (citing Ex. 1004 ¶¶ 14, 75, 78, 87–88, 90–92, 94, 96, Fig. 3; Ex. 1003 ¶¶ 218–220). Petitioner further argues that “a POSITA would have understood data in the history accumulation database (historical data) to be provided to the car navigation system (present said historical data to said device) to enable generation of transition state information.” Id. at 74 (citing Ex. 1003 ¶ 221).” slip op. at 21
Patent outcomesUS 10,829,002 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,829,002 - PTAB · Jul 14, 2025 · IPR2025-00153 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR of claims 1–30 on all petitioned grounds, finding a reasonable likelihood that claims 1, 8, 15, and 22 are obvious over Ferro, Oyobe, Donnelly, Letendre, and Seelig.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Response. Paper 6 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on our review of the record,1 we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“motivated and found it obvious to modify Ferro-Oyobe-Donnelly to include Letendre’s graphical slider on the charge level bar graph of the GUI as a third portion, where the operator moves the slider to specify a desired charge.” Pet. 60 (citing Ex. 1003 ¶ 235). Petitioner contends that Ferro- Donnelly already reflects a system with a GUI on a touchscreen for depicting state of charge and modifying that GUI to add a slider for specifying the state of charge is expressly motivated by Letendre’s indication that “it is essential that the driver be able to limit any draw down so travel is not affected.” Id. (citing Ex. 1007, 19). Letendre also describes its GUI with the slider as “a control that the driver sets according to driving needs.” Id. at 59 (citing Ex. 1007, 19). Ferro’s express description of an input/output device for managing charging preferences and Letendre’s express description of a GUI for setting charging parameters suggest using Letendre’s GUI with Ferro’s system. Id. at 60–61 (citing Ex. 1003 ¶ 236). Petitioner also argues that its proposed combination constitutes “applying a known technique ([Letendre’s] slider . . .) to a known device ([Donnelly’s] vehicle GUI showing a charge bar graphic) ready for improvement to yield predictable results of easily allowing a user to choose a desired level of charge.” Id. at 61 (citing Ex. 1003 ¶ 237). Petitioner also contends that “[s]liders on GUIs were known to make inputting information easier, and thus [an ordinarily skilled artisan] would have been motivated to include a slider on the bar graph.” Id. (citing Ex. 1003 ¶ 237). An ordinarily skilled artisan would have reasonably expected to successfully combine Letendre’s slider in the GUI suggested by Ferro-Donnelly because that GUI already enabled setting charging preferences including “amount of charge” (i.e., minimum and maximum). Id. at 61–62 (citing Ex. 1004 ¶ 123; Ex. 1003 ¶¶ 238–239).” slip op. at 25
- Strike new argumentNew argument consideredDecided for petitioner
“impermissibly incorporating arguments from Mr. Andrews’s Declaration into the Petition to avoid the word count limit. Prelim. Resp. 56–59. Patent Owner contends that the Andrews declaration is “over twice as long as the Petition at 214 pages” with a substantive portion containing “an incredible 29,831 words.” Id. at 57. Patent Owner contends that “the only way to potentially understand the Petitioner’s proposed unpatentability challenges is to wade through the 29,831 words of the Andrews Declaration.” Id. Patent Owner also complains that Andrews supports his testimony relating to Petitioner’s first challenge by citing “thirty-seven (37) additional references in addition to Ferro, Oyobe, Donnelly, Letendre, and Seelig.” Id. We discern no violation of Rule 42.6(a)(3). To the contrary, that Mr. Andrews’s supports his extensive explanations of his opinions with citations to dozens of pieces of objective evidence, is a feature, not a bug of his testimony. Mr. Andrews, and Petitioner by extension, leave virtually none of the substance of his testimony unsupported by objective evidence, a practice that we applaud.” slip op. at 28
§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,631,987
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.