- PTAB · Jul 14, 2025 · IPR2025-00152 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR of claims 1–17 on all asserted grounds after finding a reasonable likelihood that claims 1, 6, and 11 are obvious over Sutardja, Donnelly, and Letendre.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Preliminary Response. Paper 6 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on our review of the record,1 we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends that an ordinarily skilled artisan would have been motivated to incorporate Donnelly’s GUI into Sutardja’s display to more easily and conveniently communicate Sutardja’s state of charge information to a user in a graphical format. Id. at 35 (citing Ex. 1011 ¶ 242; Ex. 1003 ¶¶ 157–159. Petitioner also argues that an ordinarily skilled artisan would have found it obvious to combine Donnelly’s GUI depicting a bar graph indicating the charged and uncharged capacity of a vehicle battery into Sutardja according to well-known methods that would have yielded predictable results. Pet. 36 (citing Ex. 1003 ¶ 160). Petitioner also contends that an ordinarily skilled artisan would have reasonably expected to successfully combine Donnelly’s GUI as it relates to the state of charge into Sutardja’s vehicle, which already processed information about the state of charge of its battery and included a display showing charging parameters. Id. (citing Ex. 1011 ¶¶ 242, 243, Ex. 1003 ¶ 161).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“includes “at least” a bar graph as shown in Figure 7. Id. at 4. Patent Owner argues that Petitioner’s “proposed construction should be rejected” because it “would wrongly import embodiments from the specification.” Prelim. Resp. 20–21. Patent Owner also contends that an ordinarily skilled artisan would recognize that the “unitary charge indicator is not limited to a bar graph representation.” Id. at 21. We discern no dispute over the meaning of “unitary vehicle charge indicator” because Petitioner does not argue that the term is “limited” to the embodiment shown in Figure 7, only that the term “at least includes” that embodiment. Patent Owner does not contend otherwise.” slip op. at 8
- Strike new argumentDecided for petitioner
“Patent Owner argues that Petitioner violates Rule 42.6(a)(3) by impermissibly incorporating arguments from Mr. Andrews’s Declaration into the Petition to avoid the word count limit. Prelim. Resp. 46–49. Patent Owner contends that the Andrews declaration is “over 140 pages” with a substantive portion containing “multiples of the allotted 14000 words” to a petition. Id. at 47. Patent Owner contends that “the only way to potentially understand the Petitioner’s proposed unpatentability challenges is to wade through the extraneous pages cited within the Andrews Declaration.” Id. Patent Owner also complains that Andrews supports his testimony relating to Petitioner’s first challenge by citing “many additional references in addition to references actually ‘relied upon’ by Petitioner.” Id. at 47–48. We discern no violation of Rule 42.6(a)(3). To the contrary, that Mr. Andrews’s supports his extensive explanations of his opinions with citations to dozens of pieces of objective evidence, is a feature, not a bug of his testimony. Mr. Andrews, and Petitioner by extension, leave virtually none of the substance of his testimony unsupported by objective evidence, a practice that we applaud.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,990,788 - Klipsta Pty Ltd v. Lindsay AlbaneseInstitutedPTAB · Jul 10, 2025 · IPR2025-00346 · APJ Annette R Reimers · IPR · Institution
The Board instituted IPR on claims 1–18 and all petitioned grounds, finding a reasonable likelihood that claim 1 is anticipated by KR ’458.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition and the evidence of record, we conclude that the information demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review as to the challenged claims of the ’047 Patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) “would be a regular consumer/shopper with a rudimentary knowledge of the use of magnetic clips and a basic understanding of clip construction.” Pet. 13. We find, for purposes of this Decision, that the ’047 Patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of skill reflected in these references and in the ’047 Patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The ’047 Patent discloses that in addition to being separate straps, the rear strap and the front strap “can be formed from a single piece of material.” Ex. 1001, 3:40–44, 5:24–32, 10: 18–25. In particular, Figures 5A–5B of the ’047 Patent illustrate rear strap 510 and front strap 520 as being “formed from a single piece of material that is folded approximately in half where a first half can be the rear strap 510 and a second half can be the front strap 520.” Id. at 10:18–21, Figs. 5A–5B. Indeed, Patent Owner acknowledges “[i]t should be noted that forming the first and second straps from a single piece of material is well within the scope of the claimed invention.” Ex. 1007, 5 (citing the ’047 Patent at 3:37–44). Moreover, we note the positions taken by the parties are consistent with the fact that claim 13, which depends from claim 1, recites “wherein the first strap and the second strap are formed from a single folded strap.” Ex. 1001, 14:47–48. We, therefore, adopt Petitioner’s construction of “the second strap joined to the first strap” to include “a single piece of material.”” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“The ’047 Patent discloses that the hook is used to attach the hat holder to another object. Ex. 1001, 8:31–33. In reference to Figures 3A–3C, the ’047 Patent discloses that “the hook 340 is formed from a strap of flexible material. The flexible material can be, for example, nylon, leather or leatherette. The hook 340 can be formed from the same material as the front or rear straps 310 and 320, respectively.” Id. at 8:26–31, Figs. 3A–3C; see also id. at 6:58–7:3. This disclosure is indicative that the term “hook” can be a strap in contrast to a structure that is typically regarded as being a hook, as shown in Figures 1A–1C, 2A–2C, 4A–4B, 6A–6B, 7, 8 of the ’047 Patent. Additionally, we note that consistent with the above disclosure, claim 10, which depends from claim 1, recites “wherein the hook is [a] flexible strap having a closure.” Ex. 1001, 14:41–42. We, therefore, adopt Petitioner’s construction of a “hook” to include “structure that serves to attach the hat holder to another object.”” slip op. at 13
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 10,413,047 - PTAB · Jun 25, 2025 · IPR2024-01280 · APJ Jo-Anne M Kokoski · IPR · Remand
On remand, the Board denied institution under § 314(a), finding the Fintiv factors favored denial despite declining to deny under § 325(d).
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Other than initials on a lengthy IDS, nothing in the record indicates that the Examiner substantively considered Takeuchi, Kim, Pienemann, or among over 1,000 other references listed on the IDS, which, as noted in the Director Review Decision, “is over 40 times the size of a typical IDS.” Pet. Remand Br. 5–6; DR Dec. 7 n.3 (citing Setting and Adjusting Patent Fees During Fiscal Year 2025, 89 FR 91898 at 91924 (Nov. 20, 2024)); Ex. 1002, 228–284. Petitioner also shows that the applicant did not respond to the Examiner’s request that the applicant specifically point out “any particular reference or portion of a reference in the [IDS] which the examiner should take [sic] pay particular attention to.” Ex. 1002, 174, 295– 302.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Patent Owner is likely correct that the ITC would not have been inclined to grant a stay if one had been requested at the time the Institution Decision issued. Moreover, the ITC conducted a full evidentiary hearing a month after the Institution Decision issued, and the target date for the ITC’s final determination is several months before the projected statutory deadline for the Board’s final written decision. PO Remand Br. 7. Accordingly, we determine that Fintiv factor 1 weighs in favor of discretionary denial. See also Klein Tools, Inc. v. Milwaukee Electric Tool Corp., IPR2024-01400, Paper 22 at 2 (PTAB June 9, 2025) (Acting Director Stewart determining that Fintiv factor 1 weighs in favor of discretionary denial when the ITC investigation is unlikely to be stayed, the ITC already conducted a full evidentiary hearing, and the ITC final determination is expected to issue six months before the statutory deadline for the Board’s final written decision).” slip op. at 19
Discretionary denialcites PhillipsPatents in suitUS 11,925,202 - PTAB · Jun 25, 2025 · IPR2024-01406 · APJ Jo-Anne M Kokoski · IPR · Remand
On remand, the Board denied institution of review of claims 1, 3, 4, 8–13, and 15 under § 314(a), finding the Fintiv factors favored discretionary denial.
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“stay or evidence exists that one may be granted if a proceeding is instituted.” Fintiv, Paper 11 at 6. A stay of litigation pending resolution of an inter partes review allays concerns about inefficiency and duplication of efforts, and strongly weighs against exercising our authority to deny institution. Fintiv, Paper 11 at 6. The Guidance Memo states that “the Board will apply the Fintiv factors when there is a parallel proceedings at the International Trade Commission.” Guidance Memo 2. Patent Owner asserts that a stay of the ITC Investigation had not been requested at the time of the Institution Decision,7 and argues that “the ITC does not stay investigations pending IPR.” PO Supp. Br. 4. Patent Owner also notes that the Institution Decision issued “just days before the ITC evidentiary hearing.” Id. Accordingly, Patent Owner argues that this factor favors denial. Id. Patent Owner is likely correct that the ITC would not have been inclined to grant a stay if one had been requested at the time the Institution Decision issued. Moreover, the ITC conducted a full evidentiary hearing less than three weeks after the Institution Decision issued, and the target date for the ITC’s final determination is four months before the statutory deadline for the Board’s final written decision. PO Supp. Br. 5. Accordingly, we” slip op. at 9
Discretionary denialPatents in suitUS 11,925,202 - Samsung Electronics Co., Ltd. v. Sionyx, LLCInstitution deniedPTAB · Jun 6, 2025 · IPR2025-00065 · APJ Brian D Range · IPR · Institution
The Board denied institution of IPR challenging claims 1–44 under § 314(a), finding the Fintiv factors favoring denial outweighed the Petition’s strong merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“stipulation would only eliminate the District Court’s consideration of Haddad204. Despite the stipulation, the District Court would still have to consider invalidity of every claim the Petition addresses and would still have to consider the Alie, Baggenstoss, and Park references. Cf. Stellar at 4 (“Petitioner’s invalidity arguments in the district court are more expansive and include combinations of the prior art asserted in these proceedings with unpublished system prior art, which Petitioner’s stipulation is not likely to moot.”). In other words, “Petitioner’s stipulation does not ensure that [this proceeding] would be a ‘true alternative’ to the district court proceeding.” Id. at 3–4. Because of the remaining overlap between the Petition and the District Court proceeding, Fintiv factor four weighs strongly in favor of discretionary denial.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“for back side illumination (BSI), which appears to teach or suggest a textured region with surface features “located on the light incident side of the semiconductor layer and configured to interact with incident [EMR].” Pet. 22–27 (citing Ex. 1006, Fig. 5, ¶¶ 53, 68, 96; Ex. 1004 ¶¶ 39–40, 88–95, 101–107). As Petitioner and its expert explain, a person of ordinary skill in the art would have been motivated to modify Figure 5 of Alie into a BSI device because BSI devices allow more incident light to reach the semiconductor layer, resulting in more light being absorbed, an increase in the quantum efficiency, and an improvement in the signal to noise ratio. Pet. 25–26 (citing Ex. 1006 ¶¶ 68, 70; Ex. 1004 ¶¶ 39–40, 92, 95). Patent Owner argues that Alie does teach, suggest, or disclose “a textured region comprising a plurality of shallow trench isolation features.” Prelim. Resp. 9–11. But it appears Petitioner has at least shown Alie teaches or suggests this element. See discussion supra. Patent Owner further argues that Petitioner fails to present any proof that a person of ordinary skill in the art would have been motivated to modify Figure 5 of Alie into a BSI device. Id. at 11–15. But, in our view, Petitioner has provided an adequate motivation to modify Alie—so that more light will be absorbed, yielding an increase in the quantum efficiency and an improvement in the signal to noise” slip op. at 18
- Parallel petitionsNot reached
“17 Petitioner filed petitions for IPR2025-00064 and IPR2025-00065 at the same time. Both petitions address the ’682 patent but apply different art. Patent Owner also argues the second petition (IPR2025-00065) should be denied because one petition is sufficient. Patent Owner’s Response to Petitioner’s Notice Ranking Parallel Petitions, Paper 11. Because we deny institution based on Fintiv discretion, it is not necessary to reach Patent Owner’s multiple petition argument.” slip op. at 20
§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,347,682 - Samsung Electronics Co., Ltd. v. Sionyx, LLCInstitution deniedPTAB · Jun 6, 2025 · IPR2025-00064 · APJ Brian D Range · IPR · Institution
The Board denied institution of IPR challenging claims 1–44 under § 314(a), finding the Fintiv factors favoring denial outweighed the petition’s strong merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“arguments, and evidence presented in the parallel proceeding.” Fintiv at 12 (emphasis added). “[A] timely-filed Sotera stipulation . . . from a petitioner”—“that, if an IPR . . . is instituted, the petitioner will not pursue in district court . . . any ground raised or that could have been reasonably raised in the IPR”—“is highly relevant, but will not be dispositive by itself. Instead, the Board will consider such a stipulation as part of its holistic analysis under Fintiv.” March 2025 Fintiv Guidance 2–3. Here, Petitioner’s invalidity contentions in the district court case cover” slip op. at 14
- Parallel petitionsNot reached
“18 Petitioner filed petitions for IPR2025-00064 and IPR2025-00065 at the same time. Both petitions address the ’682 patent but apply different art. Patent Owner also argues the second petition (IPR2025-00065) should be denied because one petition is sufficient. Patent Owner’s Response to Petitioner’s Notice Ranking Parallel Petitions, Paper 11. Because we deny institution based on Fintiv discretion, it is not necessary to reach Patent Owner’s multiple petition argument.” slip op. at 22
Discretionary denialcites KSRPatents in suitUS 10,347,682 - Sram, LLC v. Fox Factory, Inc.All claims unpatentablePTAB · Jun 6, 2025 · IPR2024-00216 · APJ Frances L Ippolito · IPR · Final written decision
Claims 1–9, 11–15, and 19 are unpatentable, including by anticipation over Gartner and Nakaya and obviousness over Gartner and Kodama and Nakaya and Kodama.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’223 patent “would have a degree in Mechanical Engineering and at least three years’ experience in vehicle suspension technology, or a Master’s degree in Mechanical Engineering with a concentration in design of vehicle suspension technology and/or shock absorbers.” Pet. 5–6, n.1. Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See PO Resp. Based on the complete record, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“As Petitioner discerns, claim 1 does not recite “dampening only at the end portion of a compression stroke.” Rather, claim 1 expressly requires “a fluid flow path formed in the bottom out cup for providing fluid communication from the cup to the compression portion of the chamber during a compression stroke of the damper[.]” Ex. 1001, 7:44–47 (emphasis added). In this way, claim 1 contemplates that the bottom out cup operates “during a compression stroke of the damper,” rather than only at the end portion of a compression stroke or only near an end of a compression stroke. Similarly, independent claims 11 and 19 do not require that the bottom out cup provide damping only at the end or near the end of a compression stroke. See Ex. 1001, 8:8–23, 8:61–9:5. Claim 11 recites “a bottom out cup in fluid communication with the damper chamber” and “an adjustable fluid flow path formed in the cup, the flow path providing fluid communication between the cup and the primary compression chamber in a compression stroke of the damper.” Id. (emphasis added). Claim 19 also recites “in a compression stroke of the damper” and does not limit damping to the end, or near the end of a compression stroke. See id. at 8:61–9:5 (“in to the compression chamber at a first rate with the valve in a first position and at a second rate with the valve in a second position where the first rate is greater than the second rate and the valve includes an adjuster accessible from an exterior of the shock absorber.”) (emphasis added). The ’223 patent as a whole also does not describe the bottom out cup as damping or providing dampening only at the end or near the end of the compression stroke, but more broadly as during the compression stroke. With reference to Figure 3A, the ’223 patent discloses that bottom out piston 250 enters “the bottom out cup 275 during a compression stroke of the shock absorber.” Ex. 1001, 3:38–50 (emphasis added). Additionally, we observe that the ’223 patent discloses “[a]s the piston completely engages the cup 275, dampening is increased.” Id. at 3:64–65 (emphasis added). We understand this to mean that bottom out dampening occurs at the end of the compression stroke, but may also occur “during” the compression stroke and “increase” as the piston completely engages the bottom out cup.” slip op. at 16
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner
“Considering Gartner’s disclosure, we credit Dr. Wang’s testimony because his testimony is better supported by the reference. Dr. Wang configured for providing damping . . . [and] bottom out cup 260, 460 (pink) is formed at the end of compression portion 26.4 (light red) and provides additional damping to reduce bottoming out[.]” Ex. 1019 ¶ 58 (citing Ex. 1010, Abstract, annotated Fig. 12A, 1:15–33, 9:33–48; Ex. 1002 ¶¶ 179– 180, 188–190; Pet. 108–110). As discussed above, internal shock absorber 400 contains cup-shaped compression volume 460.4 that provides additional damping after the initial portion of the compression stroke. See Ex. 1010, 7:49–51, 7:55–56, 7:62–67, 9:20–24. Gartner further discloses these features as accommodating or protecting from bottoming out. See id. code (57). Patent Owner’s position and Dr. Slocum’s testimony otherwise, requires Gartner to expressly invoke the term “bottom out cup” instead of compression volume. See Ex. 2010 ¶¶ 104–106. We disagree that is necessary. The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831 (Fed. Cir. 1990). We find that Gartner discloses a “cup-shaped feature configured for providing dampening at the end of a compression stroke.” Gartner discloses that internal shock absorber 400 provides damping after the initial portion of the stroke and as compression continues, compression volume 460.4 reduces as part of that damping. Ex. 1010, 7:49–51, 7:55–56, 7:62–67, 9:20–24.” slip op. at 31
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Id. code (57) (emphases added). Though Gartner does not explicitly employ the term “bottom out cup,” it is not lost upon us that the internal shock absorber, e.g., shock absorber 400, functions during/in a compression stroke (e.g., after the initial portion of the compression stroke), to provide dampening while protecting from bottoming out. Considering Gartner’s disclosure, we credit Dr. Wang’s testimony because his testimony is better supported by the reference. Dr. Wang configured for providing damping . . . [and] bottom out cup 260, 460 (pink) is formed at the end of compression portion 26.4 (light red) and provides additional damping to reduce bottoming out[.]” Ex. 1019 ¶ 58 (citing Ex. 1010, Abstract, annotated Fig. 12A, 1:15–33, 9:33–48; Ex. 1002 ¶¶ 179– 180, 188–190; Pet. 108–110). As discussed above, internal shock absorber 400 contains cup-shaped compression volume 460.4 that provides additional damping after the initial portion of the compression stroke. See Ex. 1010, 7:49–51, 7:55–56, 7:62–67, 9:20–24. Gartner further discloses these features as accommodating or protecting from bottoming out. See id. code (57). Patent Owner’s position and Dr. Slocum’s testimony otherwise, requires Gartner to expressly invoke the term “bottom out cup” instead of compression volume. See Ex. 2010 ¶¶ 104–106. We disagree that is necessary. The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831 (Fed. Cir. 1990). We find that Gartner discloses a “cup-shaped feature configured for providing dampening at the end of a compression stroke.” Gartner discloses that internal shock absorber 400 provides damping after the initial portion of the stroke and as compression continues, compression volume 460.4 reduces as part of that damping. Ex. 1010, 7:49–51, 7:55–56, 7:62–67, 9:20–24.” slip op. at 31
Patent outcomesUS 8,550,223 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Enfish · Phillips · KSR · GrahamPatents in suitUS 8,550,223 - Apple Inc. v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · May 28, 2025 · IPR2024-00255 · APJ Annette R Reimers · IPR · Final written decision
Claims 2, 4, and 6–10 are unpatentable as obvious over Bhattacharya and Zeng, and over Bhattacharya, Zeng, and Spain; claims 1, 3, and 11 were disclaimed.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Second, the key differences between Petitioner’s and Patent Owner’s proposed qualifications for a person of ordinary skill in the art at the time of the invention is that Patent Owner asserts “experience in wireless telecommunications and cellular technology is necessary,” as well as a background in radio frequency communications and/or navigation system technology with two years of industry experience working in the same, would be required. PO Resp. 22–23 (citing Ex. 2018 ¶ 46); see also id. 44– 45. The ’104 patent is directed to locating a wireless mobile device in a geographic region. Ex. 1001, 1:13–20; PO Resp. 44. Bhattacharya is 9 Patent Owner refers to IPR2024-01209, but the correct citation is IPR2023- 01209. See PO Resp. 22. 1005, code (57), ¶¶ 1, 13; PO Resp. 44. Zeng is directed to handoff from one cell to another in a wireless cellular communication system to achieve continuous service. Ex. 1006, 1; PO Resp. 44. Spain is directed to a method for locating the concentration of mobile radio traffic in a coverage area. Ex. 1007, code (54), ¶¶ 1, 11; PO Resp. 44. We find that there is support in the ’104 patent and prior art consistent with Patent Owner’s assertion that the qualifications of a person of skill in the art would include knowledge of radio navigation and mobile communications technology. Accordingly, we adopt Patent Owner’s proposed qualifications for a person of ordinary skill in the art.” slip op. at 8
- Expert testimonyPetitioner expert creditedMixed
“In this case, Patent Owner attempts to make much of Dr. Sundaresan’s statement that he had been informed of the qualifications of a person of ordinary skill in the art. See PO Resp. 41–43. Dr. Sundaresan’s testimony, however, set forth this understanding of the requisite level of skill in the art (Ex. 1003 ¶ 8). In his supplemental declaration, Dr. Sundaresan further testifies that: I agreed with this POSITA definition when preparing the Declaration, and I continue to hold the opinion that the POSITA definition is both correct and appropriate based on the disclosures of the ’104 patent and the prior art analyzed in the Declaration. Ex. 1055 ¶ 17. Dr. Sundaresan further testifies that “[i]f I did not agree with the POSITA definition, then it would not have been included in paragraph 8 of the Declaration.” Id. ¶ 18. Dr. Sundaresan’s inclusion of the definition of the level of ordinary skill in his original declaration indicates that he agrees with the definition, as confirmed by his cited subsequent testimony. We note that, even with Patent Owner’s arguments, the record is clear that Patent Owner was on notice of Petitioner’s proposed definition of the level of ordinary skill at the time of the Petition. Pet. 7; cf. Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1006 (Fed. Cir. 2023) (holding that Petitioner is not required to anticipate all arguments in its Petition and allowing consideration of reply where patent owner had sufficient notice of petitioner’s position and adequate opportunity to respond).” slip op. at 14
- BurdenUnpatentable
“Based on the evidence presented, Petitioner adequately establishes by a preponderance of the evidence that a person having ordinary skill in the art would have had reason to reach the Bhattacharya-Zeng combination with a reasonable expectation of success.” slip op. at 44
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“explained below, we agree with Petitioner that Patent Owner’s additional requirement of evaluating the calibration data to determine the boundaries of the area represented by a grid point should not be included in the construction of either “grid point” or “non-uniform grid point.” Instead, based on the full record, we discern no reason to alter our prior construction of “grid point” as “a point associated with representative calibration data for an area” and maintain that construction for this Final Written Decision. The construction of “grid point” we adopt is supported by the Specification of the ’104 patent. Namely, the ’104 patent discloses that “[i]n general, a non-uniform grid point (NUG) may represent the signal characteristics and/or calibration data over a given region,” and “NUGs represent an area of collected calibration data.”18 Ex. 1001, 3:50–60. The district court identified the second quoted passage, which is identically recited in the ’104 patent (see Ex. 2018, 3:56–60) as “provid[ing] a clear indication of the meaning of ‘grid point.’” Ex. 2012, 19 (emphasis added). We agree with the district court’s analysis. Although the ’104 patent does not explain how a generic “grid point” might differ from the described “nonuniform grid point,” we do not find this distinction pertinent to construing “grid point” in this case because neither party raises this issue. Also, based on the claim wording “non-uniform grid point,” a “non-uniform grid point” is a type of grid point. See Pet. Reply 3 (explaining why that plain meaning supports Petitioner’s proposed construction). Furthermore, the district court construed “grid point” only, not “non-uniform grid point.” Ex. 2012, 18–20.” slip op. at 27
Patent outcomesUS 7,561,104 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,561,104 - PTAB · May 23, 2025 · IPR2025-00196 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR on claims 1–16 under both § 103 grounds, finding a reasonable likelihood that at least one claim would have been obvious over Best-2008 and Osada.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Under our current guidance, the filing of a Sotera-type stipulation is not conclusive, but remains “highly relevant” and will be considered “as part of [our] holistic analysis” here. See Guidance Memo. Whether Petitioner has other bases for invalidating the ’457 patent, such as the CarnoJet prior art product identified in the district court, is not a consideration here if such bases could not be asserted in this proceeding (and are not being used to argue over the asserted prior art here as a loop hole from the stipulation, of which there is no evidence).” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“satisfied that Petitioner has met its burden for institution. No argument by Patent Owner persuades us otherwise. Petitioner has shown that each limitation and element of claim 1 is taught or suggested by the combination of Best-2008 and Osada. Moreover, Petitioner’s asserted reason to combine the references is supported by the references’ disclosures: Best-2008 suggests filtration of its coolant is desirable, but provides no specific means for doing so; Osada teaches a way of filtering fluid from an open-top tank, similar to Best-2008’s.” slip op. at 42
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A POSITA[12]in the field of the ’457 patent at the time of the earliest possible effective filing date (December 14, 2012) would have had Bachelor of Science degree in mechanical or chemical engineering and at least two years of experience relating to the design and/or implementation of fluid circulation systems involving application of fluid dynamics and heat transfer principles. Additional education may serve as a substitute for a lack of experience and vice versa. (Ex-1003- Dahm at ¶¶36-41, 63-70.) Pet. 18–19. Patent Owner applies this same definition. Prelim. Resp. 6–7. At this stage of the proceeding, we accept and use Petitioner’s proposed and unopposed definition of the ordinarily skilled artisan. It appears that Petitioner’s proposed definition comports with the level of skill in the art reflected in the prior art of record and the ‘457 patent, itself. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Although either of the district court proceedings’ definitions of the term “weir” appears to accurately describe the feature, at this stage of the proceeding, we do not find it necessary to expressly interpret this claim language.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,405,457 - Samsung Electronics Co., Ltd. v. Sionyx, LLCInstitution deniedPTAB · May 21, 2025 · IPR2025-00161 · APJ Monica S Ullagaddi · IPR · Institution
The Board denied institution of IPR challenging claims 1–18 under § 314(a), concluding that the Fintiv factors, viewed holistically, favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“The standard for institution is set forth in 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition and the 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.” 35 U.S.C. § 314 (2019); see also 37 C.F.R § 42.4(a) (2019) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the parties’ contentions and the evidence of record, we exercise our discretion to deny institution.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“view of a parallel proceeding, we consider the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 7 Japanese Unexamined Patent Application Publication No. 2009–188316 A, published Aug. 20, 2009 (Ex. 1011). A certified translation, to which we cite, is provided (Ex. 1012, “Yamada”). 8 E. Fred Schubert, LIGHT-EMITTING DIODES, 2nd ed., 163–190, 2006 (Ex. 1013, “Schubert”). discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6. We consider each of these factors below.” slip op. at 4
Discretionary denialPatents in suitUS 11,721,714
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.