- PTAB · Nov 14, 2025 · IPR2025-00910 · APJ Kevin W Cherry · IPR · Institution
Instituted IPR of claims 1–19 on all asserted grounds after finding a reasonable likelihood that Apple would prevail on at least one claim, including over Cirik alone.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented demonstrates a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’128 patent. Accordingly, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Akl, Petitioner contends that an ordinarily skilled artisan for the ’128 patent “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology.” Pet. 4. Petitioner additionally contends that “[a]dditional years of experience could substitute for an advanced-level degree (and vice versa).” Id. Patent Owner states that “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 2. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’128 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no formal construction are presently necessary for purposes of demonstrating obviousness of the Challenged Claims based on [the asserted grounds].” Pet. 9. Patent Owner does not at this time address claim construction. See generally Prelim. Resp. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We note, however, there may be some claim terms below whose constructions the parties may wish to address during trial.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“On the current record, we find that Petitioner has shown sufficiently that Cirik teaches the claimed “first configuration parameters for beam failure recovery, comprising first random access parameters.” See Pet. 13– 17. Patent Owner argues that Petitioner fails to address this limitation, but we disagree. Prelim. Resp. 3. As we have set out above, Petitioner has provided a detailed mapping of what disclosures of Cirik (and Cirik’s provisional) on which it relies. Based on the current record, we see nothing incorrect in Petitioner identifying multiple parameters as making up the “first configuration parameters for beam failure recovery.” As the plain language of claim 1 makes clear, there are “parameters”—plural—not just one. We also find, on the current record, that those “parameters” are not limited by the claim to only “random access parameters.” The disputed claim limitation uses the transitional phrase “comprising” in reciting the “first configuration parameters for beam failure recovery.” As courts have explained, “[i]n the parlance of patent law, the transition ‘comprising’ creates a presumption that the recited elements are only a part of the device, that the claim does not exclude additional, unrecited elements.” Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001). Claim 1 recites “first configuration parameters for beam failure recovery, comprising first random access parameters.” Thus, we agree with Petitioner that the “first configuration parameters for beam failure recovery” can—but are not required to—include additional parameters (i.e., in addition to the recited “first random access parameters”). Here, we find that, on the current record, Petitioner has shown sufficiently Cirik’s “one or more configuration parameters [that] may indicate the maximum number of beam of beam failure counter” is such a parameter for beam failure recovery. Ex. 1005 ¶ 307; Ex. 1003 ¶ 52. As Petitioner correctly notes, these are substantially the same as examples of “first configuration parameters for beam failure recovery” identified in the ’128 patent. See Pet. 15 (citing Ex. 1001, 63:9–12, 41:65–67; Ex. 1003 ¶ 53). Petitioner has further sufficiently shown that Cirik also discloses that as part of its beam failure recovery process, Cirik initiates certain “random access (RA) procedures.” Id. (citing Ex. 1005 ¶ 152, 161–164, Figs. 13A– C). As part of these RA procedures, we agree that Cirik discloses sending a configuration message including “one or more random access channel (RACH) parameters.” Id. (citing Ex. 1005 ¶¶ 151–154, 156, 161; Ex. 1003 ¶¶ 54–55). As Petitioner explains, “[t]he RACH parameters included in a configuration message can include indications of ‘one or more Physical RACH (PRACH) occasions available for transmission’ of a random-access preamble message and information for determining the power level of the transmission.” Id. (citing Ex. 1005 ¶¶ 153, 154). Cirik explains this “contention-free random access procedure . . . may be initiated for beam failure recovery.” Ex. 1005 ¶ 162; see also Pet. 20–23 (discussing in detail in the context of limitation [1b] the RA procedures for beam failure recovery in Cirik). We note that nothing in the claim language requires that the first configuration parameters must be received in a single message. Indeed, the claim language explicitly permits “one or more messages.” Thus, there is nothing improper about the Petitioner identifying multiple messages as including the “first configuration parameters for beam failure recovery” (i.e., Cirik’s configuration parameters that indicate the maximum number of beam failures and Cirik’s configuration parameters for random access processes used in connection with beam failure recovery), as Patent Owner suggests. Prelim. Resp. 4 (“But at no point does Petitioner assert that the configuration message for first random access parameters is included within the ‘one or more configuration parameters [that] indicate the maximum number of beam failures’ that it identifies for the ‘first configuration parameters’ limitation.”). Accordingly, for purposes of institution, we find that Petitioner has shown sufficiently that Cirik discloses this limitation.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,979,128 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Nov 14, 2025 · IPR2025-00909 · APJ Justin T Arbes · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable over Ying and Yang.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Conclusion Petitioner’s contentions are supported by the testimony of Dr. Akl and are persuasive based on the current record. See Pet. 7–28; Ex. 1003 ¶¶ 58–83. Petitioner has shown a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Ying and Yang. Accordingly, we institute review “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a). 4. Claims 2–20 Patent Owner does not argue dependent claims 2–20 separately. Prelim. Resp. 3–5. On this record, we disagree with Patent Owner’s arguments regarding parent claim 1 and are persuaded that Petitioner has shown a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Ying and Yang. See supra Section II.D.3. Accordingly, we need not determine at this time whether Petitioner also has shown a reasonable likelihood of prevailing as to any of the other challenged claims. See 37 C.F.R. § 42.108(a).” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Interpretation We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner argues that “no claim terms need be construed.” Pet. 6–7. Patent Owner states that “claim construction is not required to resolve any issues.” Prelim. Resp. 2. We conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (emphasis added) (citation omitted)).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’695 patent (November 2019),4 a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology,” where “[a]dditional years of experience could substitute for an advanced-level degree (and vice versa).” Pet. 6 (citing Ex. 1003 ¶¶ 29–32). Patent Owner “utilizes Petitioner’s proposed level of skill in the art” for its Preliminary Response. Prelim. Resp. 2. Based on the record presented, including our review of the ’695 patent and the types of problems and solutions described in the ’695 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“3. Claim 1 a) Petitioner’s Contentions Petitioner argues that Ying and Yang collectively teach all of the limitations of claim 1 and a person of ordinary skill in the art would have been motivated to combine their teachings, with a reasonable expectation of success. Pet. 11–28. As to the combination of references, Petitioner asserts that a person of ordinary skill in the art “would have been motivated to include configuration parameters for both the NUL and SUL carriers, as taught in Ying, in a single DCI, as expressly depicted in Yang, to coordinate both normal uplink (NUL) and supplemental uplink (SUL) transmissions in a mobile communication environment.” Id. at 12 (citing Ex. 1003 ¶¶ 58–59). According to Petitioner, “[t]he combination involves coordinating both carriers already operating in the mobile communication environment by implementing Ying’s DCI example (e.g., in Listing 6) to provide cancellation indications for both the normal uplink (NUL) and the SUL in one DCI,” achieving the “predictable result” of “improv[ed] communication capacity, speed, flexibility, and/or efficiency.” Id. at 12–13 (quoting Ex. 1004, col. 1, ll. 31–41). Petitioner also alleges various other reasons for why a person of ordinary skill in the art would have been motivated to combine the references’ teachings in that manner, including “reduced communication overhead,” simplification of the UE’s decoder operation, and the need to choose from only two options (i.e., “using one DCI to encode both NUL and SUL carriers . . . or using two DCIs”). Id. at 13–17 (citing Ex. 1003 ¶¶ 60–64).” slip op. at 15
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,986,695 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Nov 14, 2025 · IPR2025-00907 · APJ Justin T Arbes · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable over the three 3GPP references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we institute an inter partes review as to claims 1–20 of the ’944 patent on all grounds of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’944 patent (November 2019),2 a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology,” where “[a]dditional years of experience could substitute for an advanced-level degree (and vice versa).” Pet. 10 (citing Ex. 1003 ¶¶ 39–44). Patent Owner “utilizes Petitioner’s proposed level of skill in the art” for its Preliminary Response. Prelim. Resp. 8. Based on the record presented, including our review of the ’944 patent and the types of problems and solutions described in the ’944 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Interpretation We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner argues that “no claim terms need be construed.” Pet. 8. Patent Owner does not propose interpretations of any claim terms in its Preliminary Response. We conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding, but encourage the parties to address various claim interpretation issues identified below during trial. See infra Section II.D.5; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (emphasis added) (citation omitted)).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“Patent Owner responds that Petitioner fails to show that the 3GPP-38.213-CR “document sent to [the] 3GPP email list on November 3 was available to non-3GPP members by November 5, 2019” (the alleged critical date for the ’944 patent). Prelim. Resp. 3 (emphasis omitted); see Pet. 10. According to Patent Owner, the listserv archive of emails cited by Mr. Rodermund “only shows that the November 3, 2019 email is available now—not that it was uploaded within a day of when the original email was sent”—and Mr. Rodermund provides only his uncorroborated opinion that uploads were “automatic” and “immediate.” Prelim. Resp. 5–6 (citing Ex. 1008 ¶¶ 43–63, 72–80). Patent Owner also contends that the November 2, 2019, metadata only relates to creation of 3GPP-38.213-CR and does not support Petitioner’s contention that the email was immediately uploaded. Id. at 6. Finally, Patent Owner argues that whether the subject matter of 3GPP-38.213-CR was discussed at the 3GPP meeting in October 2019 is “irrelevant,” given the date of the metadata, and has no bearing on whether the document itself was later publicly accessible. Id. at 6–7. Assessing the evidence of record collectively, however, we are persuaded that Petitioner has shown a reasonable likelihood that 3GPP-38.213-CR was publicly accessible from the ETSI email archive before November 5, 2019. Given his many years of experience with ETSI, in particular his responsibilities pertaining to management of documents like change requests, and as the “list owner” “responsible for managing and administrating” several email exploder lists, Mr. Rodermund appears to be well-qualified to testify to the matters in his declaration. See Ex. 1008 ¶¶ 7, 10–15, 47. He explains in detail how, based on his experience, emails sent” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,139,944 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Nov 5, 2025 · IPR2025-00895 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted challenges after finding a reasonable likelihood that at least one challenged claim would be unpatentable.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (POSITA) would have had at least [a bachelor’s degree in] electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks. Additional education might substitute for some of the experience, and additional substantial experience might substitute for some of the educational background. . . . A POSITA would also have familiarity with the 3GPP LTE standards, and would have understood how to search through the available Technical Specifications for implementing RAN technologies. Pet. 21–22 (citing Ex. 1003 ¶¶ 50–53). Patent Owner uses Petitioner’s proposed level of skill in the art at this stage, with a proposed modification to insert “a bachelor’s degree in” to Petitioner’s statement. Prelim. Resp. 12–13; id. at 12, n.1. We have inserted this proposed modification in brackets in the above block quotation. We are persuaded, on the present record, that Petitioner’s proposal, as modified by Patent Owner, is consistent with the problems and solutions in the ’113 patent and prior art of record. We adopt Petitioner’s skill definition at this stage.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties do not propose any claim constructions. See Pet. 11–12; Prelim. Resp. 8. As no terms are in dispute, we determine that no terms require construction at this stage.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION At this stage of the proceeding, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenges as to at least one challenged claim. At this preliminary stage, we have not made a final determination as to the patentability of the challenged claims or any underlying factual and legal issues. V. ORDER It is, therefore, ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of all challenged claims of the ’113 patent is instituted with respect to all challenges of unpatentability set forth in the Petition; and FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial commencing on the entry date of this Decision.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“measurement value, as Jover teaches.” Id. (citing Ex. 1005 ¶¶ 39–40; Ex. 1003 ¶¶ 115–30). Among other reasons, Petitioner contends that a POSITA would have been motivated to combine “to improve the accuracy and reliability of the beam failure determination.” Id. at 37 (citing Ex. 1003 ¶¶ 115–30). Petitioner further contends that a POSITA would have had a reasonable expectation of success because “it would have been straightforward for a POSITA to implement Jover’s triggering condition in Xia’s method.” Id. at 38 (citing Ex. 1003 ¶¶ 115–30). After considering Patent Owner’s arguments, which we address below, we agree with Petitioner at this stage that the combination of Xia and Jover renders obvious limitation [1e]. Patent Owner first argues that Jover “does not cure the deficiencies of Xia because Jover’s threshold condition for an increase in BER is not used for triggering a transmission of the first and second radio signal.” Prelim. Resp. 20. Just like Xia, Patent Owner contends, Jover discloses no “causality between the threshold being exceeded and transmitting the first and second radio signal.” Id. at 21. This argument does not undermine Petitioner’s showing at this stage because Petitioner relies on Xia, not Jover, for the claimed “triggering the transmission,” or “causality,” as Patent Owner calls it. See Pet. 36–38. That is, Petitioner relies on Jover for the triggering condition and on Xia for the actual triggering. See id. Patent Owner’s argument attacking the references individually is unpersuasive. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of refences.”). Patent Owner next contends that one of ordinary skill in the art would not have combined Xia and Jover “since Jover is directed to the opposite objective of the ’113 Patent or Xia.” Prelim. Resp. 21. That is, Patent Owner asserts, Jover teaches away from the disclosed methods. Id. at 22. Patent Owner explains, “Jover provides no attempt to improve the beam strength, but rather ignores it through beam sweeping or nullif[ies] it, in contrast to the purpose of the ’113 Patent.” Id. at 22–23. At this stage, Patent Owner’s argument is insufficient to undermine” slip op. at 15
Claim construction§ 103 obviousnessPatents in suitUS 10,568,113 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Oct 31, 2025 · IPR2025-00900 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted IPR on claims 1–20 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review may not be authorized by statute “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the record before us, we determine Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one of claims 1– 20 of the ’727 patent. Accordingly, we institute the requested inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) relating to the subject matter of the ’727 Patent as of [November 1, 2016] would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology. APPLE-1003, Section V. Additional education might substitute for some of the experience, and additional substantial experience might substitute for some of the educational background. Id. Pet. 3–4. Patent Owner at this stage utilizes Petitioner’s proposed level of skill in the art. Prelim. Resp. 5. As Petitioner’s definition of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“On this record, we agree with Petitioner. Patent Owner, in contending that Park’s hybrid CSI signal does not describe two signalings, does not address Petitioner’s mapping of the claimed “first signaling” and the claimed “second signaling.” Petitioner persuasively maps the claimed “first signaling” to Park’s hybrid CSI signal (Pet. 21), and persuasively maps the claimed “second signaling” to Park’s DCI format signal (Pet. 30). Patent Owner does not explain why Park’s DCI format signal does not describe the claimed “second signaling.” On this record, we are sufficiently persuaded by Petitioner and Dr. Akl that Park’s DCI format signal, which triggers the UE to perform aperiodic CSI reporting, describes a “second signaling . . . used to determine the Q2 antenna port(s)” as recited in limitation 1.6. See Ex. 1003 ¶¶ 137–142; Ex. 1005, 38:20–36.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“include Shin’s CSI request field provides the benefit of allowing the network to directly configure the CSI report behavior of a UE, such that the base station can obtain channel state information regarding specific channels used by the UE and the base station in order to exchange data as taught by Shin. Pet. 59 (citing Ex. 1003 ¶ 71). Petitioner also contends that adding Shin’s CSI request field to the DCI format signal of Park is the combination of familiar elements according to known methods that yields a predictable result, and that the combination uses Shin’s known technique of including a CSI request field in a DCI format signal to improve Park’s DCI format signal in the same way. Id. at 58 (citing Ex. 1003 ¶ 69; KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415–421 (2007)).” slip op. at 9
§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 11,063,727 - Apple Inc. v. Resonant Systems, Inc.All claims unpatentablePTAB · Oct 23, 2025 · IPR2024-00983 · APJ Norman H Beamer · IPR · Final written decision
Claims 1–6, 10, 17, 19, and 20 are unpatentable under § 103 over Alexander and Cosper; the alternative Gregorio-based grounds did not establish unpatentability.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“112(f). Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). But if the term does not use the word “means,” then it is presumed not to be subject to Section 112(f). Id. “That presumption can be overcome, but only if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.” Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp., 948 F.3d 1342 (Fed. Cir. 2020). “The correct inquiry, when ‘means’ is absent from a limitation, is whether the limitation, read in light of the remaining claim language, specification, prosecution history, and relevant extrinsic evidence, has sufficiently definite structure to a person of ordinary skill in the art.” Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014).” slip op. at 12
- Prior constructionPrior construction adoptedDecided for patent owner
“both parties have asserted in the Apple Litigation that the “control component” requirement is a means-plus-function limitation subject to 35 U.S.C. §112(f), despite the fact that the control component limitation does not recite “means for.” Pet. 3 (citing Ex. 1012, 3–8; Ex. 1013, 13); PO Resp. 6–7. Indeed, the court in the Apple Litigation has concluded that the control component requirement is subject to 35 U.S.C. § 112(f), and has construed that requirement accordingly: Function: receiving control signals input to the oscillating resonant module; receiving outputs from the one or more sensors; controlling oscillation of the mass to produce a vibration response according to the received control signals by generating, using one or more of the received sensor outputs, control outputs to an actuator that drives the mass to oscillate. Structure: a microcontroller, a processor, a microprocessor, or a CPU that performs the algorithm shown in Figure 45 or the algorithm described in the corresponding text. See, e.g., 31:19–32:13, and equivalents thereof. Ex. 2001, 10; Ex. 2002, 40. Because of the Apple Litigation record, Petitioner presents its challenges in the alternative, first applying a plain meaning approach to the control component requirement, and also analyzing the requirement under the construction adopted in the Apple Litigation. Pet. 3–5. We adopt the court’s construction in the Apple Litigation. 35 U.S.C.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s expert declarant contends that person of ordinary skill in the art (POSITA) “would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of vibration-generating systems; additional years of experience could substitute for the advanced-level degree.” Ex. 1003 ¶ 27. Patent Owner offers “a similar level of ordinary skill in the art.” PO Resp. 2. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’882 patent specification.” slip op. at 9
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“(1) Analogous Art Our reviewing court has stated that “[t]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations and internal quotes omitted). While these two criteria are helpful in many instances, we must not lose sight of the key question at hand: what is “prior art” as that term is used in 35 U.S.C. § 103(a)? References that are “too remote to be treated as ‘prior art’” are excluded from the obviousness analysis. In re Sovish, 769 F.2d 738, 741, 226 (Fed. Cir. 1985). The non-analogous art test provides helpful insight on the underlying question of what is “prior art” within the meaning of the statute; we should not, however, be blind to the reality of the circumstances of the case before us. In re Wood, 599 F.2d 1032, 1036 (CCPA (1979). Nor should we adhere to rigid and mandatory formulas that overly limit the inquiry. KSR Int’l Co., 550 U.S. at 419.” slip op. at 22
Patent outcomesUS 11,152,882 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,152,882 - Ascend Elements, Inc. v. Duesenfeld GmbHInstitution deniedPTAB · Oct 10, 2025 · PGR2025-00037 · APJ Kevin W Cherry · PGR · Institution
The Board denied institution of PGR on claims 1–14 because Petitioner did not show that any challenged claim was more likely than not unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“information presented in the petition filed under [35 U.S.C. §] 321 . . . demonstrates that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). For the reasons set forth below, we determine that Petitioner has failed to demonstrate that it is more likely than not that at least one of claims 1–14 of the ’463 patent is unpatentable. Accordingly, we deny institution of a postgrant review of claims 1–14 based on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have had at least a Bachelor’s degree in electrical engineering, material science, chemical engineering, or an equivalent field, as well as at least 2 to 3 years of academic or industry experience in the recycling or processing of lithiumion batteries. Additional formal education focusing on processing of lithium batteries may substitute for practical experience and additional practical experience can substitute for less education.” Pet. 10–11. Patent Owner does not contest this definition of a person of skill in the art. See Prelim. Resp. 11. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’463 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“distinct from “comminute[ion],” Petitioner offers only the testimony of its expert, Mr. Juzkow, who equates Tomioka’s “cutting” with “comminute[ion].” See Ex. 1003 ¶ 121. However, Mr. Juzkow provides insufficient reasoning to support his conclusion, particularly given the intrinsic and extrinsic evidence discussed above. In contrast, Patent Owner’s expert, Mr. Dantam, provides extensive reasoning, supported by citations to other evidence, to support his conclusion that Tomioka’s “dismantling” is not the claimed “comminution.” Thus, we give more weight to Mr. Dantam’s testimony than Mr. Juzkow’s testimony. Weighing this evidence all together, we find that Petitioner has failed to show that it is more likely than not that Tomioka’s teaches the claimed comminution under Petitioner’s first theory.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundTeaching away not foundNot shown unpatentable
“obvious. Pet. 34–35. However, we agree with Patent Owner that Petitioner has also failed to show that it is more likely than not that Tomioka renders this limitation obvious. See Prelim. Resp. 28–31. To begin with, Petitioner’s contentions lack sufficient reasoning explaining why a person of ordinary skill would have modified Tomioka in the manner proposed. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Petitioner merely asserts that a person of ordinary skill in the art could use the roller system in place of the dismantling disclosed for the embodiments in Figures 19 and 20. On this record, we find this bare contention insufficient. actual disclosure of Tomioka. The rollers in Tomioka are used to separate the “battery body” from the “resin package enclosing the battery body,” and Tomioka specifically discloses that this technique is designed to “avoid damaging the battery body.” Ex. 1005 ¶¶ 25, 26, 29; Ex. 2011 ¶¶ 72–73. Thus, there is a significant difference between what Tomioka teaches and what Petitioner proposes to use the roller system to do. In addition, as Patent Owner points out, Tomioka specifically discloses there are risks associated with mechanically crushing battery packs, such as “risk of sparking due to residual voltage if the battery units are damaged in the process.” Ex. 1005 ¶ 5. Although we do not agree with Patent Owner that this amounts to a “teaching away,” see In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994), we do believe that this teaching suggests a trade off that should be weighed in determining whether to make the modification, see Medichem S.A. v. Rolabo S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). However, Petitioner has failed to account adequately, if at all, for this trade off. Thus, we find that Petitioner has failed to show that it is more likely than not that Tomioka accounts for the claimed “comminuting.”” slip op. at 15
§ 103 obviousness§ 112 disclosurecites Phillips · Graham · NautilusPatents in suitUS 12,119,463 - Apple Inc. v. Resonant Systems Inc., D/B/A/ RevelhmiAll claims unpatentablePTAB · Oct 9, 2025 · IPR2024-00698 · APJ Brian D Range · IPR · Final written decision
Claims 1–5 are unpatentable as obvious under § 103 based on the asserted combinations of Izumi, Cosper, Rossi, Ibuki, and Aldrich.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (POSITA) would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of systems incorporating linear actuators; additional years of experience could substitute for the degree. Pet. 4 (citing Ex. 1003 ¶ 30–31). Patent Owner contends a POSITA would have had (1) a bachelor’s degree in electrical engineering, mechanical engineering, or a comparable field of study, and (2) at least two years of professional experience with electro-mechanical control systems, or other similarly relevant industry experience. PO Resp. 2–3. Additional relevant industry experience may compensate for lack of formal education or vice versa. Id. Patent Owner further contends this is similar to Petitioner’s POSITA contention. Id. at 3. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’767 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). Our reasoning herein would be the same under Patent Owner’s similar proposal.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“Claim 1, Preamble. Both parties agree that the preamble of claim 1 is limiting. PO Resp. 6. We agree that claim 1’s preamble is limiting. We also note that the parties agreed that this preamble is limiting in the District Court case. Dist. Ct. Const. 10.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Because neither party asserts that construction of “driving component” or “control component” is necessary to resolve the issues before us, we decline to expressly construe these claim terms. 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 . . . 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)). For clarity, because Petitioner argues that plain and ordinary meaning is appropriate and because Patent Owner does not dispute that construction, we adopt the plain and ordinary meaning of these claim terms when comparing the challenged claims to the prior art. Other claim terms. It is unnecessary for us to expressly construe other claim terms for purposes of this Decision. See, e.g., Realtime Data, LLC, 912 F.3d at 1375.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art would have combined Izumi’s module to include multiple sensors in accordance with Cosper’s teachings. Pet. 15. Petitioner argues that the sensors would monitor the moving element and generate a control signal in accordance with Izumi. Id. at 15–16. Petitioner further argues that Izumi’s controller would have been implemented using a microprocessor and memory as Cosper suggests. Id. at 16. Petitioner argues three reasons why a person having ordinary skill in the art would have combined Izumi with Cosper’s teachings. Id. at 16–19. First, Petitioner argues that a person having ordinary skill in the art would have looked to Cosper as a way to further Izumi’s objective of having a sensor that detects the and controls the movement of the moving element. Id. at 16–17. Second, Petitioner argues that the combination of Izumi and Cosper would have enhanced reliability of the feedback sensors by capturing “data specific to different operating parameters.” Id. at 17–18. Third, combining the references’ teachings would “facilitat[e] implementation of software instructions” by using a microprocessor and memory. Id. at 18–19. Patent Owner does not dispute Petitioner’s rationale to combine the references’ teachings. Based on our review and consideration of the record, we determine that a preponderance of the evidence supports that a person of ordinary skill in the art would have combined the teachings of Izumi and Cosper in the manner Petitioner argues (“the Izumi-Cosper combination”).” slip op. at 17
Patent outcomesUS 8,093,767 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,093,767 - Apple Inc. v. Resonant Systems Inc., D/B/A/ RevelhmiAll claims unpatentablePTAB · Oct 9, 2025 · IPR2024-00697 · APJ Brian D Range · IPR · Final written decision
Claims 1–5 are unpatentable under § 103 based on the combinations of prior art listed in the decision.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“physics, or a related technical field, and at least 2–3 years of experience related to the design or development of systems incorporating linear actuators; additional years of experience could substitute for the degree. Pet. 4 (citing Ex. 1003 ¶ 30–31). Patent Owner contends a POSITA would have had (1) a bachelor’s degree in electrical engineering, mechanical engineering, or a comparable field of study, and (2) at least two years of professional experience with electro-mechanical control systems, or other similarly relevant industry experience. PO Resp. 2–3. Additional relevant industry experience may compensate for lack of formal education or vice versa. Id. Patent Owner further contends this is similar to Petitioner’s POSITA contention and states that “Patent Owner does not believe that any of the arguments herein would change if the Board were to adopt Petitioner’s definition for the level of ordinary skill rather than Patent Owner’s.” Id. at 3. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’767 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). Our reasoning herein would be the same under Patent Owner’s similar proposal.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“Claim 1, Preamble. Both parties agree that the preamble of claim 1 is limiting. Pet. 6; PO Resp. 6. We agree that claim 1’s preamble is limiting. We also note that the parties agreed that this preamble is limiting in the District Court case. Dist. Ct. Const. 10.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Because neither party asserts that construction of “driving component” or “control component” is necessary to resolve the issues before us, we decline to expressly construe these claim terms. 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 . . . 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)). For clarity, because Petitioner argues that plain and ordinary meaning is appropriate and because Patent Owner does not dispute that construction, we adopt the plain and ordinary meaning of these claim terms when comparing the challenged claims to the prior art. Other claim terms. It is unnecessary for us to expressly construe other claim terms for purposes of this Decision. See, e.g., Realtime Data, LLC, 912 F.3d at 1375.” slip op. at 10
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Our reviewing court has stated that “[t]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations and internal quotes omitted). While these two criteria are helpful in many instances, we must not lose sight of the key question at hand: what is “prior art” as that term is used in 35 U.S.C. § 103(a)? References that are “too remote to be treated as ‘prior art’” are excluded from the obviousness analysis. In re Sovish, 769 F.2d 738, 741, 226 (Fed. Cir. 1985). The non-analogous art test provides helpful insight on the underlying question of what is “prior art” within the meaning of the statute; we should not, however, be blind to the reality of the circumstances of the case before us. In re Wood, 599 F.2d 1032, 1036 (CCPA (1979). Nor should we adhere to rigid and mandatory formulas that overly limit the inquiry. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).” slip op. at 20
Patent outcomesUS 8,093,767 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,093,767 - PTAB · Oct 9, 2025 · IPR2025-00847 · APJ Brian D Range · IPR · Institution
Instituted IPR on claims 1–11 because Petitioners showed a reasonable likelihood of proving at least one challenged claim unpatentable across the asserted grounds.
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 Petitioners meet 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 1–11 of the ’847 patent based upon Petitioners’ asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a master’s degree in electrical engineering, physics, chemistry, materials science, or a related field and three years of work experience in semiconductor manufacturing, such as, for example, in integrated circuit device (or transistor) design and/or manufacturing,” and “[a]dditional relevant education could substitute for professional experience, and significant work experience or training could substitute for formal education.” Pet. 11 (citing Ex. 1003 ¶ 38). Patent Owner does not dispute the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’847 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 neededNot reached
“Petitioner does not propose any claim constructions, except to explain that the claim 7 limitation “the spacer further comprises an offset spacer, positioned between the gate and the spacer,” is “satisfied if one layer (an ‘offset spacer’) of the claimed ‘spacer’ lies between another layer of the ‘spacer’ and the gate.” Pet. 11. Patent Owner does not dispute Petitioner’s assertions or offer any claim constructions. See generally Prelim. Resp. Because resolution of Petitioner’s proposed construction is unnecessary to our analyses for purposes of this decision, we do not address the proposal here. 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)). We do not discern a need to construe any other 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, 912 F.3d at 1375.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“a. Claim 1 Petitioner contends that claim 1 is anticipated by Lan or, alternatively, obvious in view of Lan. Pet. 18–26. Petitioner explains how Lan teaches or suggests each recitation of claim 1, and Petitioner’s position is supported by adequate evidence for institution. Id. (citing, e.g., Ex. 1003 ¶¶ 100–125). Petitioner, for example, persuasively compares the structure of Figure 12 of Lan to each limitation of claim 1. Id. Patent Owner does not dispute Petitioner’s contentions except to argue that Lan (and the Petition’s other asserted references) “Do Not Mention, Describe, or Concern ‘Raised Epitaxial Layers.’” Prelim. Resp. 22–24. Patent Owner does not persuasively undermine Petitioner’s position.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,745,847
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.