- Cargill, Incorporated v. Bunge Loders Croklaan USA, LLCRehearing deniedPTAB · Apr 29, 2025 · IPR2024-01360 · APJ Debra L Dennett · IPR · Rehearing
The Board denied Cargill’s rehearing request, leaving institution denied for claims 1, 6–9, and 11–24 because the petition did not show a reason to combine the selected prior-art data without hindsight.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Upon request for rehearing, we assess a decision on institution “for an abuse of discretion” (37 C.F.R. § 42.71(c) (2020)), which occurs when a “decision was based on an erroneous conclusion of law,” “clearly erroneous factual findings,” or “a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The burden of showing a decision should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(c) (2020). The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. We have reviewed Petitioner’s Rehearing Request and carefully considered all the arguments presented. For the following reasons, we are not persuaded that we misapprehended or overlooked any arguments or evidence.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As discussed in the Decision, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). No matter the result of combining the allegedly “readily available and well-known” information taken from particular examples from the “documentary evidence” with Petrauskaite’s disclosure, a POSITA had to have been motivated to do so at the time the invention was made.1 What is missing from the Petition is the “why.” The only motivating force in this case appears to be hindsight spurring Petitioner on to choose particular examples of palm stearin disclosed in Deffense and the soybean oil in Neff in order to justify its assertion that Petrauskaite discloses the claimed wt% ranges of triglyceride classes.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable
“artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). No matter the result of combining the allegedly “readily available and well-known” information taken from particular examples from the “documentary evidence” with Petrauskaite’s disclosure, a POSITA had to have been motivated to do so at the time the invention was made.1 What is missing from the Petition is the “why.” The only motivating force in this case appears to be hindsight spurring Petitioner on to choose particular examples of palm stearin disclosed in Deffense and the soybean oil in Neff in order to justify its assertion that Petrauskaite discloses the claimed wt% ranges of triglyceride classes.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s. We find no instance in the Petition in which “motivation” and “iodine value” are discussed together or linked in any way. The same can be said of Dr. Marangoni’s declaration. And, as noted in the Decision, it was not until the Preliminary Reply that Petitioner argued that specific data on fatty acid wt% used for the conversion calculations were selected to represent “knowledge generally available to one of ordinary skill in the art” due to similarity of the iodine value (“IV”) of the palm stearin (and soybean oil) disclosed in Petrauskaite. See Prelim. Reply 2–3. New evidence or argument in the Preliminary Reply that could have presented earlier is not permitted. On this record, we find Petitioner relies its Rehearing Request on arguments about a motivation to combine, stemming from the significance of iodine values, that were not raised in the Petition. Accordingly, Petitioner fails to support that the Decision misapprehended or overlooked arguments in the Petition about the significance of iodine values.” slip op. at 8
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,645,473 - Mediatek Inc. v. Daedalus Prime LLCInstitutedPTAB · Apr 22, 2025 · IPR2024-01488 · APJ Arthur M Peslak · IPR · Institution
The Board instituted IPR on claims 1–21 and all asserted grounds, finding a reasonable likelihood that claims 1, 2, 4, 6, 8, 9, 11, 13, 15, 16, 18, and 20 would be obvious over Sutardja …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314(a). See 37 C.F.R § 42.4(a) (2023) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition as well as all supporting evidence, we conclude that the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail in its challenge of at least one claim of the ’281 patent as unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all challenged claims of the ’281 patent on all grounds stated in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art (“POSITA”) “would have had a minimum of a bachelor’s degree in electrical engineering, computer engineering, physics, or a similar field, and approximately two years of industry or academic experience in a field related to microelectronic architecture design and development, including experience with power management techniques for multicore processors.” Pet. 4 (citing Ex. 1022 ¶¶ 49–51). Petitioner further states that “[w]ork experience can substitute for formal education and additional formal education can substitute for work experience.” Id. For the purposes of this Decision, we apply Petitioner’s proffered level of skill in the art because it appears consistent with the problems addressed in the ’281 patent and the prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner states that “no terms require construction to resolve this Petition.” Pet. 4. Petitioner also states that “[r]elated litigations may involve controversies not presented here that require construction.” Id. We determine that no express construction of any claim term is necessary for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We have reviewed Petitioner’s evidence and explanations, and based on the current record at this stage of the proceeding, find that Petitioner sufficiently establishes that an ordinarily skilled artisan would have been motivated to combine Sutardja and Mathieson with a reasonable expectation of success.” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,740,281 - PTAB · Apr 21, 2025 · IPR2025-00007 · APJ Avelyn M Ross · IPR · Institution
The Board instituted IPR on claims 1–11 on all asserted obviousness grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 (2012); 37 C.F.R. § 42.4(a). 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 the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged 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 been someone with an advanced degree involving the disciplines of electrical engineering, applied physics, chemistry, or materials science, and at least two years of experience designing, developing, or researching in the field. Alternatively, that person would have had a bachelor’s degree in electrical engineering, applied physics, or materials science, and at least three years of experience designing, developing, or researching in the field.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[n]o claim construction is believed to be necessary to resolve this Petition.” Pet. 23. And, Patent Owner does not address claim construction at this stage of the proceeding. See generally Prelim. Resp. For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Here, we are persuaded that Petitioner adequately establishes that the skilled artisan would have had reason to replace Jin’s back surface field layer with the tunnel oxide layer and polysilicon back surface field layer of Feldmann because the proposed substitution is known to reduce recombination and improve solar cell efficiency. Pet. 24–25 (citing Ex. 1009; Ex. 1012, Abstr., 270–271; Ex. 1003 ¶¶ 107–113), 37–38 (citing Ex. 1009 ¶¶ 27, 83–86, Figs. 3, 9; Ex. 1003 ¶¶ 148– 149). Petitioner also explains that “because Feldmann’s emitter, like Jin’s, is formed by diffusion, it is susceptible to shortening and would benefit from Jin’s gap-T isolation region.” Id. at 25(citing Ex. 1003 ¶ 113). Petitioner states that such improvements have been “known and suggested for decades” as demonstrated by the teachings of Lindholm and Kwark. Id. at 24 (citing Ex. 1003 ¶¶ 107–109; Ex. 1010, Abstr., Table 1; Ex. 1011, Abstr., §§ 1, 5; Ex. 1024, 742, 745; Fig. 4), 37 (stating the “Jin’s gap T . . . isolates and inhibits electrical shorting between the BSF 150 and the emitter 120”)(citing Ex. 1009 ¶¶ 57–60, 83–85, Figs. 3, 9; Ex. 1003 ¶¶ 148–149).” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,722,104 - PTAB · Apr 21, 2025 · IPR2025-00006 · APJ Debra L Dennett · IPR · Institution
The Board instituted inter partes review of claims 1–17 on all petitioned grounds, finding a reasonable likelihood that Runergy would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 (2012); 37 C.F.R. § 42.4(a). 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 the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” For the reasons set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to at least one challenged claim. Accordingly, we grant the Petition and institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have been someone with an advanced degree involving the disciplines of electrical engineering, applied physics, chemistry, or materials science, and at least two years of experience designing, developing, or researching in the field. Alternatively, that person would have had a bachelor’s degree in electrical engineering, applied physics, or materials science, and at least three years of experience designing, developing, or researching in the field. Pet. 4 (citing Ex. 1003 ¶ 49). Patent Owner does not address the level of ordinary skill in the art at this stage of the proceeding. See generally Prelim. Resp. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’009 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’009 patent and the prior art. We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that “[n]o claim construction is believed to be necessary to resolve this Petition.” Pet. 24. And, Patent Owner does not address claim construction at this stage of the proceeding. See generally Prelim. Resp. For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on the record before us, we are persuaded that Petitioner has shown sufficiently at this stage of the proceeding that an ordinarily skilled artisan would have had a reasonable expectation of success in the combination of Jin and Feldmann.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,230,009 - Lam Research Corp. v. Inpria Corp.All claims unpatentablePTAB · Apr 18, 2025 · IPR2024-00033 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1–12 are unpatentable as anticipated by the ’888 Publication; Patent Owner’s motion to add substitute claims 13–23 is granted.
RulingsFinal written decision- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“priority issue are based on the cited disclosures of the ’867 application discussed above. Ex. 2009 ¶ 29. For the reasons discussed above, we do not view the cited disclosures as sufficiently supporting Dr. Banerjee’s conclusion that the ’867 application provides support for claim 1’s average thickness range (id.) and, therefore, give this testimony little weight. Stated somewhat differently, Dr. Banerjee’s advances an opinion (really a legal one) that is not supported by the facts and not in line with the caselaw discussed in this section (such as RAI).” slip op. at 26
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner
“priority issue are based on the cited disclosures of the ’867 application discussed above. Ex. 2009 ¶ 29. For the reasons discussed above, we do not view the cited disclosures as sufficiently supporting Dr. Banerjee’s conclusion that the ’867 application provides support for claim 1’s average thickness range (id.) and, therefore, give this testimony little weight. Stated somewhat differently, Dr. Banerjee’s advances an opinion (really a legal one) that is not supported by the facts and not in line with the caselaw discussed in this section (such as RAI).” slip op. at 26
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“d) Conclusion For the reasons discussed above, Petitioner has demonstrated by a” slip op. at 30
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“For these reasons, Patent Owner has met its burden to show by a” slip op. at 34
Patent outcomesUS 9,823,564 unpatentable§ 102 anticipationcites Phillips · KSR · Graham · NautilusPatents in suitUS 9,823,564 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Harbor Island Dynamic, LLCInstitutedPTAB · Apr 4, 2025 · IPR2024-01404 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–18, finding a reasonable likelihood that claim 1 would have been obvious over Cooney.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). 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.” For the reasons provided below, we determine that Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’609 patent is unpatentable, and we institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“petition and in the parallel proceeding. After the Preliminary Response was filed, Petitioner submitted a stipulation stating that it will not pursue, in the District Court Litigation, any ground that was raised or could have reasonably been raised in this proceeding. Paper 8, 1. Petitioner’s stipulation aligns with the stipulation relied on by the Board in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“of oval-shaped void 25 in Cooney is in a “pinched off region” as claimed. Petitioner explains that the void is formed as a consequence of the chemical vapor deposition process of the conductive filler, and specifically, that the shape of the void will reflect the shape of the walls of the via. Pet. 35 (citing Ex. 1005 ¶ 59; Ex. 1002 ¶¶ 167–169). Thus, according to Petitioner, the void’s shape will be similar to the torpedo shape of the via—tapering out on the top half and tapering in on the bottom half. Id. In our view, Petitioner provides a technical reason, supported by testimony, why the bottom of the void will be in the identified pinched-off region of the torpedo-shaped via in Cooney. See id. at 35–38. Patent Owner’s arguments do not address Petitioner’s technical analysis and instead focus on the precision of Cooney’s drawings. See Prelim. Resp. 8–12. Given Petitioner’s technical analysis, however, the precision of Cooney’s drawings is not determinative. Further, Patent Owner’s argument that “void 25 is localized to [the middle portion of the via] and sealed off from the tapered . . . section” also misses the fact that the middle portion of the via still has the torpedo shape (it is the inflection point of where it goes from wider to smaller). See id. at 10–11. With respect to the void in Cooney being in a “pinched off region,” we determine that Petitioner has made a sufficient showing on this preliminary record.” slip op. at 16
- Skill levelSkill level board ownDecided for petitioner
“A person of ordinary skill in the art (POSITA) at the time of the purported invention of the ’609 patent (October 7, 2011) would have had at least a master’s degree in electrical engineering or a similar field and at least two years of experience working with semiconductor systems. Additional work or research experience can substitute for less or different education, and vice versa. Pet. 9–10 (citing Ex. 1003 ¶¶ 72–74). Patent Owner uses Petitioner’s proposed level of skill in the art. Prelim. Resp. 6. We use the parties’ agreed definition for purposes of this Decision because it appears consistent with the level of skill reflected in the prior art and ’609 patent.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,147,609 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Harbor Island Dynamic, LLCInstitutedPTAB · Apr 4, 2025 · IPR2024-01402 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–19 on all petitioned grounds, finding a reasonable likelihood that claim 1 is anticipated by Okashita.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“petition and in the parallel proceeding. After the Preliminary Response was filed, Petitioner submitted a stipulation stating that it will not pursue, in the District Court Litigation, any ground that was raised or could have reasonably been raised in this proceeding. Paper 8, 1. Petitioner’s stipulation aligns with the stipulation relied on by the Board in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential). Patent Owner argues that we should reject any “late” Sotera stipulation. Prelim. Resp. 47–48. The only authority cited for this argument are Board decisions concerning stipulations filed after a Decision on Institution was entered. Id. As Petitioner’s stipulation was filed prior to this Decision being entered, it is not “late” under the authority Patent Owner cites, and, thus, on this record, we decline to reject Petitioner’s stipulation. See NXP USA, Inc. v. Impinj, Inc., IPR2021-01556, Paper 13 (Sept. 7, 2022) (precedential) (holding that the only appropriate time for a petitioner to offer a stipulation is prior to the Board’s decision on institution) cited in CAPJ Memo, 2 n.1. In Sotera Wireless, the Board found that a stipulation such as the one proffered here by Petitioner addressed “concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions” and “ensures that an inter partes review is a ‘true alternative’ to the district court proceeding.” Sotera, IPR2020-01019, Paper 12 at 19. For these reasons, we find that this factor weighs “strongly in favor of not exercising discretion to deny institution.” Id.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). 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.” For the reasons provided below, we determine that Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’886 patent is unpatentable, and we institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We begin our analysis by pointing out that neither party offers a claim construction of “cascaded transistors,” though both parties reference the understanding of the term set forth by Petitioner’s declarant. Although we do not reject Petitioner’s declarant’s definition, we also do not adopt it as the meaning of “cascaded transistors” at this time, absent the parties’ proposal that we do. According to the ’886 patent, transistors simply “coupled in series” are “cascaded.” Ex. 1001, 6:50–51. We use this disclosure to guide our analysis. Reviewing Figure 7 of Okashita, we see a configuration of transistors 1 and 2 that appears, on this record, to be coupled in series. When transistor 2 acts as a shunt for transistor 1, i.e., when the threshold voltage of transistor 2 has been overcome, then current flows through transistor 1, through transistor 2, and then to ground. Ex. 1004, 7:15–17. At this preliminary stage, this is a sufficient showing that Okashita’s transistors are “cascaded” as contemplated by the ’886 patent.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“intervening silicon layer between the source/drain junctions and the buried silicon oxide layer. Pet. 60. Petitioner asserts that a person of ordinary skill in the art would have had a reason to take advantage of Okashita’s design: (1) to “reduce the operating temperature of the transistors,” which will “enhance their performance and reliability,” (2) to “prevent leakage of radio frequency signals,” and (3) to “minimize the effect of mismatch.” Id. at 60– 63. Patent Owner’s first argument is that a person of ordinary skill in the art would not look to Okashita because Okashita “is entirely focused on keeping AC and DC grounds separate,” something Patent Owner argues “is not present in Burgener.” Prelim. Resp. 37. It is not clear to us on this record that Patent Owner is correct that keeping AC and DC grounds separate is not present in Burgener, given that Burgener has both AC signals coming in from ports A–D, as well as digital control signals coming in from the control ports (e.g., 1708 and 1718, for port A). See Ex. 1006 ¶¶ 100–101 (discussing RF ports and control signals). In any event, even if the particular problem solved by Okashita is not one of the problems articulated in Burgener, that does not mean that the teachings of Okashita cannot be applied to Burgener. KSR, 550 U.S. at 420 (“any need or problem known in the field . . . and addressed by the patent can provide a reason for combining the elements in the manner claimed”). Petitioner has asserted three reasons, mentioned above, why a person of ordinary skill in the art would look to improve Burgener with Okashita’s teachings, and Patent Owner does not appear to contest them at this time.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,745,886 - Digital Global Systems, Inc. v. Deepsig Inc.Institution deniedPTAB · Mar 27, 2025 · IPR2025-00049 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted 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). Here, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, the Petition is denied, and no trial is instituted.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a bachelor’s degree in electrical engineering, computer engineering, or an equivalent degree and at least two years of experience working with . . . radio communication systems and machine learning.” Pet. 3 (citing Ex. 1003 ¶¶ 33–34). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Zhi Ding. Ex. 1003 ¶¶ 33–34. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. We adopt Petitioner’s description for the purposes of this Decision.” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“B. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the 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). Neither party proposes an express construction for any claim terms. Pet. 13; Prelim. Resp. 9–10. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 5
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“On this record, we agree with Patent Owner. Claim 1 recites “generating a pre-distorted radio signal by processing the transmit radio signal using a nonlinear pre-distortion machine learning model.” Ex. 1001, 14:19–24. This portion of claim 1 requires processing a transmit signal using a machine learning model. Id. Claim 1 also recites “updating the model parameters based on a distance metric computed between the transmit radio signal and a received signal that is obtained from the one or more radio receivers.” Id. at 14:30–35. This portion of claim 1 requires updating model parameters based on a distance metric computed using a received signal obtained from a receiver. Id. Thus, together, these portions of claim 1 require updating parameters for a transmit model based on a distance metric computed using a signal obtained from a receiver.” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 10,581,469 - PTAB · Mar 26, 2025 · IPR2024-01345 · APJ Andrew L Nalven · IPR · Institution
The Board instituted IPR of claims 1–12 on all asserted grounds after finding a reasonable likelihood that claims 1, 2, 4–6, 8–10, and 12 are obvious over Lee and claims 3, 7, and 11 over …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), 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.” For the reasons provided below, we determine that Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’968 patent is unpatentable, and we institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“We agree that the lack of the word “means” recited in claims 1 and 9 creates a rebuttable presumption that § 112(6) does not apply. Williamson, 792 F.3d at 1348. “When a claim term lacks the word ‘means,’ the presumption can be overcome and § 112[(6)] will apply 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.’” Id. at 1349 (citation omitted). “One way to demonstrate that a claim limitation fails to recite sufficiently definite structure is to show that, although not employing the word ‘means,’ the claim limitation uses a similar ‘nonce word that can operate as a substitute for ‘means’ in the context of § 112 [(f)].’” MTD Products, Inc. v. Iancu, 933 F.3d 1336, 1341 (Fed. Cir. 2019) (quoting Williamson, 792 F.3d at 1350). Patent Owner argues that “[a] general-purpose computer, i.e., a ‘controller,’ fails to recite sufficiently definite structure for performing the DSC’s claimed function.” PO Sur-Reply 3–4. Petitioner responds that the term “controller” has previously been found to not invoke § 112(6) because it is understood as having a definite meaning of structure. Pet. Reply 1–2 (citations omitted). Petitioner is correct that the Board and district courts have in some cases found a “controller” to recite sufficient structure. On this preliminary record, we are not persuaded that the evidence is sufficient to establish that the term “designation software controller” fails to recite sufficiently definite structure and overcome the presumption that § 112(6) does not apply. At this juncture, neither party has provided sufficient evidence as to how the claimed “designation software controller” would reasonably be understood by persons of ordinary skill in the art. See Williamson, 792 F.3d at 1349 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”). In addition, regardless of whether “designation software controller” alone connotes structure, the claim language that follows the term “designation software controller” appears to provide structure. Specifically, the claim language appears to include a step-by-step procedure, namely 1) keep the information in memory in response to a termination of viewing; and 2) designate the succeeding part of the digital moving image contents when the viewing starts again. See Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012) (“Even described ‘in prose,’ an algorithm is still ‘a step-by-step procedure for accomplishing a given result.’”); Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1427–28 (Fed. Cir. 1997) (“where a claim recites a function, but then goes on to elaborate sufficient structure, material, or acts within the claim itself to perform entirely the recited function, the claim is not in means-plus-function format”). Accordingly, for purposes of this decision, we do not construe the claimed “designation software controller” as a means-plus-function limitation. No further construction of this term is necessary for purposes of this decision. During trial, the parties may provide further briefing on this issue.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had “a Bachelors’ degree in electrical or computer engineering or a comparable field of study, plus approximately two to three years of professional experience with television and digital display systems, distributed multimedia communications, and networked computer systems.” Pet. 3–4 (citing Ex. 1002 ¶ 48). Patent Owner does not challenge Petitioner’s proffered definition as to the level of ordinary skill in the art. Prelim. Resp. 5. For purposes of this Decision, we adopt Petitioner’s assessment, which is consistent with the level of skill reflected in the specification and asserted prior art.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“viii. Conclusion as to Claim 1 Based on the current record, we are persuaded by Petitioner’s showing for limitations 1[a] through 1[e]. Accordingly, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion that claim 1 would have been obvious over Lee.” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,948,968 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Harbor Island Dynamic, LLCInstitutedPTAB · Mar 24, 2025 · IPR2024-01405 · APJ Arthur M Peslak · IPR · Institution
The Board instituted review of claims 1–20 on all petitioned grounds, finding a reasonable likelihood of unpatentability and declining discretionary denial under Fintiv.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314(a). See 37 C.F.R § 42.4(a) (2023) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, the Preliminary Response, as well as all supporting evidence, we conclude that the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail in its challenge of at least one claim of the ’826 patent as unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all challenged claims of the ’826 patent on all grounds stated in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To establish anticipation under 35 U.S.C. § 102, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyConn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Each element of the challenged claim must be found, either expressly or inherently, in the single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). When evaluating a prior art reference in the context of anticipation, the reference must be “considered together with the knowledge” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Whether an ordinarily skilled artisan would have been motivated to modify the teachings of a reference is a question of fact.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (citations omitted). “[W]here a party argues a skilled artisan would have been motivated to combine references, it must show the artisan ‘would have had a reasonable expectation of success from doing so.’” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017) (quoting In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1068–69 (Fed. Cir. 2012)). slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had at least a master’s degree in electrical engineering or a similar field and at least two years of experience working with semiconductor systems” and “[a]dditional relevant work experience can compensate for less education, and vice versa.” Pet. 23 (citing Ex. 1003 ¶¶ 73–74). Patent Owner agrees with Petitioner’s proposed level of ordinary skill in the art for the purposes of the Preliminary Response. Prelim. Resp. 16–17. For the purposes of this Decision, we apply Petitioner’s proffered level of skill in the art because it appears consistent with the problems addressed in the ’826 patent and the prior art.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,245,826
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.