- Oracle Corporation v. Joseph L. De BellisAll claims unpatentablePTAB · Jun 4, 2025 · IPR2024-00221 · APJ Jon M Jurgovan · IPR · Final written decision
The Board held claims 1–7, 15–23, and 25–30 unpatentable as obvious over the five asserted combinations; Zellweger was prior art under § 102(e).
RulingsFinal written decision- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner
“We agree with Petitioner’s assertions that Patent Owner has not shown conception of the noted claim language prior to Zellweger’s filing date. For example, claim 1’s limitation 1A requires “determining a database schema.” We find no mention of this in Patent Owner’s conception evidence.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Patent Owner does not identify any evidence in the ’720 patent, its file history, or elsewhere, to support its restrictive construction of the claim language, nor do we find any lexicographical definition or disavowal of claim scope to support it. Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (“Absent lexicography or disavowal, we do not depart from the plain meaning of the claims”). Hence, the ordinary and customary meaning of “providing a list of database fields” in limitation 1B is not limited to the time a search query was 3 A patent related to the ’720 patent, US Patent No. 9,507,835 B2, filed December 17, 2015, uses the term “search-on-the-fly” in its claims. In contrast, the ’720 patent’s claims are directed toward the truncation feature described in the patent. This suggests that Patent Owner chose not to limit the ’720 patent’s claims to the context of “search-on-the-fly” notwithstanding the ’720 patent’s title. Ex. 1001, code (54). submitted.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends as follows: A person of ordinary skill in the art at the time of the alleged invention (“POSITA”) would have had at least a bachelor’s degree in computer science, electrical engineering, or a related subject, and at least two years of experience working with databases, computer networks, and related web technologies. A more advanced degree can substitute for less work experience and vice versa. Pet. 17 (citing Ex. 1003 ¶¶ 57–61). Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the problems, solutions, technology, and educational level set forth in the ’720 patent and the prior art references asserted by Petitioner. See generally PO Resp.; Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we apply Petitioner’s proposed level in this Decision.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Specifically, Petitioner contends that Cochran seeks to provide an efficient and user-friendly method to search computer databases, and recognizes that pick lists for searches may be voluminous and exceed the capacity of a pick box to display them simultaneously such that Cochran would benefit from improved navigation methods. Pet. 55–56 (citing Ex. 1005, 4:4–19, 10:58–65; Ex. 1003 ¶¶ 482–485). Petitioner asserts that Zellweger sought to remedy the same problem of navigating long pick box lists, and argues that a POSITA would have looked to Zellweger’s Alphabet or Content Lists to replace Cochran’s scroll bars. Id. at 56–57 (citing Ex. 1003 ¶ 485). Petitioner contends that the combination is “nothing more than using one known method (Zellweger) to improve another known method (Cochran) according to the express teachings of Zellweger to yield predictable results.” Id. at 57. Petitioner contends that Cochran and Zellweger are analogous because they are directed to the same field of accessing information in databases through graphical interfaces that make information more accessible, and are both implemented as computer software. Id. (citing Ex. 1005, code (57), 1:14–20, 4:2–57; Ex. 1007, code (57), 1:35–40, 2:30–43; Ex. 1003 ¶¶ 480–481). Petitioner alleges that a POSITA would have had a high expectation of success because, among other reasons, altering Cochran to truncate entries using Zellweger’s Alphabet and Content List menus would require nothing more than routine programming. Id. at 57–58.” slip op. at 26
Patent outcomesUS 6,760,720 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,760,720 - PTAB · May 29, 2025 · IPR2025-00057 · APJ Hung H Bui · IPR · Institution
The Board denied institution on all asserted grounds because the petition did not show a reasonable likelihood that any challenged claim was unpatentable, principally failing to address the required hardware action.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Turning now to our application of SuperGuide, we note the language of the claims and the specification, as correctly recognized by the Patent Owner, confirm that the conjunctive construction of the phrase “at least one of [A] the display, [B] the audio and [C] the hardware (HW) action” is correct. Prelim. Resp. 9–10.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner. First, the construction of the phrase “at least one of [A] the display, [B] the audio and [C] the hardware (HW) action” is conjunctive in light of the language of the claims and the specification of the ’887 patent. As such, Petitioner has the burden, but fails to show all three (3) components to be reproduced at Yun’s mobile device, including: [A] the display, [B] the audio and [C] the hardware (HW) action by the HW component of the mobile device. Second, as Patent Owner observes, and we agree, “Petitioner ignores the requirement for ‘the hardware (HW) action’ entirely” and does not even mention any “hardware (HW) action.” Prelim. Resp. 14.” slip op. at 22
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied merits
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “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. Upon consideration of the contentions and the evidence of record at this preliminary stage, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’887 patent. For the reasons discussed below, we deny the Petition and do not institute an inter partes review of all challenged claims of the ’887 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“K. Discretion to Denial Under § 314(a) Patent Owner argues that we should exercise discretion under 35 U.S.C. § 314(a) and not institute trial, given the state of the parallel district court litigation. Prelim. Resp. 26–38. Because we determine that Petitioner does not establish a reasonable likelihood of prevailing based on the merits of its challenges, we need not consider Patent Owner’s arguments regarding discretionary denial.” slip op. at 34
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,934,887 - Phison Electronics Corporation v. Vervain, LLCInstitution deniedPTAB · May 28, 2025 · IPR2025-00212 · APJ Jon M Jurgovan · IPR · Institution
Institution of inter partes review of claims 1–11 was denied under § 314(a) because the Fintiv factors, viewed holistically, favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“7. Weighing the Fintiv Factors We take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” when evaluating the Fintiv factors. Fintiv at 6. The trial date (December 2025) for the parallel proceeding is considerably earlier than the projected statutory deadline (June 2026) for issuing a final written decision in this proceeding. Accordingly, Fintiv factor 2 weighs for discretionary denial. Under Fintiv factor 4, there is significant overlap between the invalidity challenges asserted in the two proceedings. Petitioner has proffered no stipulation to ameliorate concerns of duplicative efforts and conflicting decisions. Accordingly, this factor weighs for discretionary denial. Petitioner and the defendant in the parallel proceeding are the same, so Fintiv factor 5 weighs for discretionary denial.” slip op. at 15
Discretionary denialPatents in suitUS 8,891,298 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Fendgo, LLCAll claims unpatentablePTAB · May 5, 2025 · IPR2024-00113 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 9–15 are unpatentable as obvious: claims 9, 11 over Zellner and Kim; claim 15 over Walker; and claims 9–14 over Martin and Kim, with claim 14 also over Martin, Kim, and Dixit.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not address, let alone dispute, Petitioner’s proposed level of skill in the art, which is consistent the problems, solutions, technology, and educational level set forth in the ’404 patent and the prior art references asserted by Petitioner. See generally PO Resp.; Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we apply Petitioner’s proposed level in this Decision.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Reviewing the written description, we find no lexicographical definition or disavowal related to “owner identification information” in the ’404 patent. Instead, we find the term mentioned in relation to embodiments and examples. See, e.g., Ex. 1001, code (57), 4:17–25. Claim 8 of the ’404 patent recites that “owner identification information includes a name and a description of the owner of the mobile device” but, as Petitioner notes, the doctrine of claim differentiation suggests the term as used in claim 1 should be construed more broadly. Paper 28, 2; Littelfuse, Inc. v. Mersen USA EP Corp., 29 F.4th 1376, 1380 (Fed. Cir. 2022) (citing Ortho-McNeil Pharm. v. Mylan Lab'ys, Inc., 520 F.3d 1358, 1362 (Fed. Cir. 2008) (“[T]his court strives to reach a claim construction that does not render claim language in dependent claims meaningless.”)). Patent Owner is correct that “owner identification information” in claim 1 of the ’404 patent must be construed to encompass the name and description of the mobile device’s owner, as recited in claim 8. Paper 29, 2. However, we decline to restrict the term to exclude other indicia that may identify the device owner because that is not warranted by the written description, claims, and file history of the ’404 patent. Consequently, we construe “owner identification information” to mean “information that identifies the owner of the mobile device” under its ordinary and customary meaning as set forth in the ’404 patent and its file history. As recited in claim 8 of the ’404 patent, the term includes, but is not limited to, the name and description of the mobile device owner.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“have been aware of the need to implement techniques to reduce risk of false activation of panic button devices, and Zellner expressly recognizes this problem. Pet. 43–44 (citing Ex. 1008, 13:40–42; Ex. 1002 ¶¶ 242, 244). Petitioner asserts that Kim’s technique of requiring the user to press its device’s emergency key button a plurality of times was a known way to reduce false activations. Id. at 44 (citing Ex. 1002 ¶ 245). Petitioner posits that a POSITA would have considered the combination of Zellner and Kim to amount to the use of a known technique to improve a similar device in the same way, as well as the application of a known technique to a known device ready for improvement to yield predictable results. Id. at 44–45 (citing Ex. 1002 ¶¶ 246–247). These are recognized rationales supporting a motivation to combine. KSR, 550 U.S. at 417. We agree with Petitioner that a POSITA would have been motivated to modify Zellner’s device to require multiple button presses as taught by Kim in order to reduce false activations. Petitioner further contends that a POSITA would have had a reasonable expectation of success in modifying Zellner’s panic button to require three presses for activation, and that examples of prior art showed how this could be done. Pet. 45 (citing Ex. 1002 ¶¶ 248–251). Since Kim expressly discloses implementation of this feature, we agree with Petitioner that a POSITA would have expected success in combining Zellner and Kim. Ex. 1008, 13:40–42.” slip op. at 37
Patent outcomesUS 11,265,404 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,265,404 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Fendgo, LLCNo claims unpatentablePTAB · Apr 30, 2025 · IPR2024-00114 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–8 were not shown unpatentable because DiPerna964 and Strack do not teach or suggest the panic button readying itself to perform the claimed functions.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“After review of the ’404 patent’s description, we find no disclosure that pressing the panic button together with another button causes the panic button to ready itself to perform functions (1) and (2) as recited in limitation 1[d]. The closest descriptions we find to limitation 1[d] are that the safety switch readies the panic button to contact 911 (Ex. 1001, 6:59–62), that the panic button may be activated by pressing the panic button with another button (id., 3:59–67, and that the panic button may start a speech recognition process that can trigger the device (id., 7:61–62). Consequently, claim 1 is itself the best source for determining what the claim language means. We determine that the ordinary and customary meaning of the “ready itself” feature of claim 1 is that the panic button “prepares itself to be triggered to perform the panic button functions (1) and (2).” Since the intrinsic evidence is sufficiently clear to discern the meaning of the “ready itself” limitation, we do not resort to extrinsic evidence. See Phillips, 415 F.3d at 1317 (explaining that extrinsic evidence is less significant than intrinsic evidence); Seabed Geosolutions (US) Inc. v. Magseis FF LLC, 8 F.4th 1285, 1287 (Fed. Cir. 2021) (Court of Appeals gives primacy to intrinsic evidence and resorts to extrinsic evidence only if consistent with intrinsic evidence); Sequoia Tech., LLC v. Dell, Inc., 66 F.4th 1317, 1324 (Fed. Cir. 2023) (Court of Appeals stating that its “decision rests solely on the intrinsic evidence”).” slip op. at 9
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“Thus, the ’353 application describes that moving the safety switch into position readies the panic button to contact 911, which is not the same as the panic button being activated to ready itself to perform functions (1) and (2) required by claim 1 of the ’404 patent. Patent Owner’s reliance on disclosures elsewhere in the ’353 application is unavailing. PO Resp. 5–8 (citing Ex. 1006, 15, 17, 19–21, 23, 25); PO Sur-Reply 2–3 (citing Ex. 1006, 15, 17, 19–20, 24–25)). For example, while the ’353 application does mention voice activation with a codeword and activation by depressing of the panic button together with another button (see, e.g., Ex. 1006, 17, 21, 24–25), it does not mention that depressing the panic button together with another button causes the panic button to ready itself to perform recited functions (1) and (2). The application explains that “[t]he [panic] button can send a signal to a controller inside the device to activate [the code word activation] process” and “[t]he [panic] button can start the speech recognition process in one embodiment, to trigger the device.” Ex. 1006, 25. But that describes readying the device for activation by the code word, not readying the button to perform the recited functions. The ’353 application also mentions the word “ready” in relation to using a self-defense mechanism such as pepper spray, which does not appear to be related the readying of the panic button recited in claim 1. Ex. 1006, 15, 19–20. Petitioner has thus met its burden to demonstrate that claims 1–8 of the ’404 patent lack written description support for a panic button adapted to “ready itself” to perform the recited functions because the limitation is not present in the ’353 application to which the ’404 patent claims priority.3 Pet. 8–10. The burden of production thus shifted to Patent Owner to demonstrate that the ’353 application has written description support for limitation 1[d], which it has not done on this record. PO Resp. 5–8; PO Sur-Reply 2–3.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“DiPerna964 discloses a separate “safety” switch that readies the panic button to contact 911 upon being pressed (Ex. 1028 ¶ 41), but there is no mention of pressing the panic button together with another button to cause the panic button to “ready itself” to perform panic button functions (1) dialing a public or private network for an emergency purpose and (2) activating the transmitting unit, as limitations 1[d] and 1[e] require. DiPerna964 mentions pressing two buttons together to activate the panic button (see, e.g., Ex. 1028 ¶¶ 17, 23–25, 27), but not to “ready itself” to perform recited functions (1) and (2). Petitioner relies on Strack’s triggering the collection of audio, video, and location data for transmission to a remote location as equivalent to a panic button readying itself to, when activated, perform the panic button functions (1) dialing a public or private network for an emergency purpose and (2) activating the transmitting unit. Pet. 15–17 (citing Ex. 1002 ¶¶ 76–88). We do not agree with Petitioner’s contention because Petitioner fails to explain how Strack’s button press that collects and then transmits audio, video, and location data would ready the panic button to perform recited functions (1) and (2). It appears that Strack’s button press readies the device, not the button, to perform the functions. As neither DiPerna964 nor Strack nor their combination teach or suggest limitations 1[d] and 1[e], we determine it is unnecessary to proceed further with the obviousness analysis. PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194 (Fed. Cir. 2014) (citing Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1164 (Fed.Cir.2006) (stating that we consider motivation to combine and reasonable expectation of success only “if all the elements of an invention are found in a combination of prior art references”)).” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which appears consistent with the educational level, technology, problems and solutions identified in the ’404 patent and prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we apply Petitioner’s proposed level in this Decision.” slip op. at 18
Patent outcomesUS 11,265,404 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,265,404 - Phison Electronics Corporation v. Vervain, LLCInstitution deniedPTAB · Apr 28, 2025 · PGR2024-00048 · APJ Stacey G White · PGR · Institution
The Board denied institution because Petitioner did not show it was more likely than not that claims 1–6 were unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 324 and 37 C.F.R. § 42.4(a). We may not institute a post-grant review unless “the information presented in the petition . . . , if such information is not rebutted, would demonstrate 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) (2024). Upon considering the evidence and arguments presented, we determine, as discussed below, that Petitioner has not demonstrated that it is more likely than not that at least 1 of the claims challenged in the Petition is unpatentable. Therefore, we deny1 Petitioner’s request to institute post-grant review of claims 1–6.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s declarant, Dr. Khatri, proposes a definition of the person of ordinary skill in the art. Ex. 2001 ¶ 24. Dr. Khatri, however, notes that his opinions would be the same under either his proposal or Petitioner’s proposal. Id. ¶¶ 25–26. Patent Owner states that, for purposes of the Preliminary Response, it “adopts Petitioner’s definition of a person of ordinary skill in the art.” Prelim. Resp. 13 (citing Pet. 22–23; Ex. 2001 ¶¶ 22–26). We determine that the current record supports Petitioner’s description of an ordinarily skilled artisan. For purposes of this Decision, therefore, we adopt Petitioner’s description of an ordinarily skilled artisan. We also note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima, 261 F.3d at 1355.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for the claim terms “MLC memory modules” and “SLC memory module.” Pet. 23–28. Patent Owner disagrees with Petitioner’s constructions, but does not contest them because it argues that construction of these terms is not necessary to resolve the parties’ disputes. Prelim. Resp. 14. Based on the record presented, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “more likely than not” standard for instituting a post- grant review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.” The Federal Circuit has held that “[t]he written description requirement is met when the disclosure relied on for support ‘reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.’” RAI Strategic Holdings, Inc. v. Philip Morris Prods. S.A., 92 F.4th 1085, 1088 (Fed. Cir. 2024) (quoting Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citation omitted)). The written description inquiry is a question of fact, is context specific, and must be determined on a case-by-case basis. Ariad, 598 F.3d at 1351 (citing Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985); Capon v. Eshhar, 418 F.3d 1349, 1357–58 (Fed. Cir. 2005)). “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. (citing Capon, 418 F.3d at 1357–58). Factors used to evaluate the sufficiency of a disclosure include: 1) “the existing knowledge in the particular field”; 2) “the extent and content of the prior art”; 3) “the maturity of the science or technology”; and 4) “the predictability of the aspect at issue.” Id. (citing Capon, 418 F.3d at 1359). As support for the term “memory space,” the ’612 patent explains that because “the SLC NAND flash is used to boost the lifetime (endurance) of the storage system, it can be considerably lesser in amount than the MLC NAND flash.” Ex. 1001, 5:20–23; see Ex. 2001 ¶ 51. As an example, the ’612 specification states that “a system may set SLC NAND flash equal to 12.5% or 25% of MLC NAND flash (total non-volatile memory storage space=MLC+SLC).” Ex. 1001, 5:23–25; see Ex. 2001 ¶¶ 51, 62. In addition, we find persuasive Dr. Khatri’s testimony that one of ordinary skill in the art would have understood that “there are two spaces—MLC and SLC—where data is stored, and the total memory space is the combination of the two.” Ex. 2001 ¶ 51. Further, the ’612 patent’s Figure 1 depicts “memory space,” e.g., dynamic random-access memory (DRAM) 20, one or more disks 24, MLC NAND flash memory module 26, and SLC NAND flash memory module 28. Ex. 1001, 5:37–45, Fig. 1; see Ex. 2001 ¶ 64. The ’612 patent’s Figure 4 also depicts “memory space,” e.g., NAND flash memory bank 56 comprising “a plurality of MLC NAND flash memory modules 60a and a plurality of SLC NAND flash memory modules 62a” and NAND flash memory bank 58 comprising “a plurality of MLC NAND flash memory modules 60b and a plurality of SLC NAND flash memory modules 62b.” Ex. 1001, 7:8–14, Fig. 4; see Ex. 2001 ¶ 64. On the record before us, we find the above noted disclosures to be sufficient to support the disputed claim language. For these reasons, the ’612 patent’s disclosure “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” See Ariad, 598 F.3d at 1351.” slip op. at 15
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 11,854,612 - Hesai Technology Co., Ltd. v. Ouster, Inc.All claims unpatentablePTAB · Mar 17, 2025 · IPR2023-01456 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1–3, 5–8, and 10–17 are unpatentable as obvious over Imai and Higashi, with Grzesik or Pacala for dependent claims; remaining grounds were not reached.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner asserts that a person of ordinary skill in the art would have had an undergraduate degree in mechanical or electrical engineering or physics, plus 2–3 years of experience in LiDAR design. Pet. 3 (citing Ex. 1003 ¶¶ 72–77). Patent Owner argues that a POSITA would have had an undergraduate degree in mechanical or electrical engineering and two to three years of work experience with electro-optical and electro-mechanical devices or systems, with, at a minimum, at least one year of work experience was with LIDAR designs, where less work experience may be compensated by a higher level of education or vice versa. PO Resp. 4 (citing Ex. 2009 ¶ 60). We agree with and will apply Patent Owner’s statement of the level of ordinary skill in the art. This level of ordinary skill is reflective of the education and experience that would have been required to understand the problems and solutions identified in the ’381 patent and the prior art. Okajima v. Bourdeau, 261 F.3d 1350 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“The term “coincident with” as used in the ’381 patent does not require perfect coincidence. To explain why, we provide an annotated version of Figure 2 of the ’381 patent below. In Figure 2 above, the rays of electromagnetic radiation indicated in red originate from illumination source 111, but they are not coincident with the corresponding aperture’s field of view, and instead they are absorbed or blocked by the aperture layer’s stop region. Ex. 1001, 3:61–4:5. As Figure 2 shows, out of five ray lines emitted by illumination source 111, only three are within its corresponding aperture’s field of view. This conveys an understanding that “coincident with” does not require perfect matching of the discrete spot of radiation from the illumination source and the aperture’s field of view.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We begin with the language of the claims. The claims merely require that the “plurality of pixels are arranged in a second arrangement, proportional to the first arrangement.” Ex. 1001, 17:30–31. There are no other specific requirements about “first arrangement” or the “second arrangement” and no specific requirement about what kind of “proportional[ity]” is required. Thus, the language of the claims does not provide a basis for Patent Owner’s narrow reading, nor does it necessarily preclude it.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner identifies multiple reasons to make this combination. First, with respect to Higashi’s bandpass filter, Petitioner argues that “a POSITA would have been prompted to implement Imai’s system to include a bandpass filter for the received light (as suggested by Higashi) so as to advantageously pass through only light of the operational wavelength of the corresponding laser emitter and ‘eliminate the effect of background light.’” Id. at 60 (citing Ex. 1011 ¶ 86; Ex. 1003 ¶ 256). Petitioner contends that “the resulting combination would advantageously filter out interfering light sources along the optical path of each of the detector pixels, thereby improving accuracy, improving the signal-to-noise ratio, and reducing the likelihood of false detections at the detector pixel.” Id. at 61. Second, Petitioner argues that “a POSITA would have been motivated to arrange multiple SPADs in each of Imai’s detector pixels (e.g., pixels 1- 16 in Imai’s FIG. 11) so that “erroneous detection of pixels[] can be reduced” and improved accuracy is achieved.” Id. (citing Ex. 1011 ¶ 71–72; Ex. 1003 ¶ 257; Ex. 1009 ¶ 48). Third, Petitioner contends that using Higashi’s multi-SPADs in Imai’s detector pixels would have led to uninterrupted performance when an individual diode is quenched, and would have furthered Imai’s objective of “inhibiting the increase of detection obtaining time” because multi-SPADs facilitate high speed data processing as they can take turns to receive the incoming photons. Id. (Ex. 1009 ¶¶ 6–7; Ex. 1011 ¶¶ 71, 72; Ex. 1027 ¶¶ 3– 4; Ex. 1003 ¶ 258). Fourth, Petitioner asserts that the combination “was simply the” slip op. at 45
Patent outcomesUS 11,178,381 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,178,381 - Phison Electronics Corporation v. Vervain, LLCInstitution deniedPTAB · Mar 17, 2025 · PGR2024-00047 · APJ Steven M Amundson · PGR · Institution
The Board denied institution because Petitioner did not show it was more likely than not that any of claims 1–7 was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to institute a post-grant review. We may not institute a post-grant review unless we determine that “the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate 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) (2024).” slip op. at 2
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not shown unpatentable
“2. PETITIONER’S CONTENTIONS Petitioner challenges the ’546 patent’s claims as encompassing a” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable
“2. PETITIONER’S CONTENTIONS Petitioner challenges the ’546 patent’s claims as failing to satisfy” slip op. at 26
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not shown unpatentable
“2. PETITIONER’S CONTENTIONS Petitioner challenges the ’546 patent’s claims as failing to satisfy” slip op. at 36
§ 101 eligibility§ 103 obviousness§ 112 disclosureDiscretionary denialcites Alice · Mayo · Phillips · KSR · Graham · NautilusPatents in suitUS 11,830,546 - Hesai Technology Co., Ltd. v. Ouster, Inc.All claims unpatentablePTAB · Mar 13, 2025 · IPR2023-01421 · APJ Kevin W Cherry · IPR · Final written decision
Claims 21 and 23–34 are unpatentable as obvious over Pacala and Droz, or Pacala, Droz, and Villenueve; the Board did not reach the Hall-based grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
- Skill levelSkill level patent owner adoptedDecided for patent owner
- Expert testimonyPatent owner expert discountedPetitioner expert creditedDecided for patent owner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
Patent outcomesUS 11,175,405 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,175,405 - Hesai Technology Co., Ltd. v. Ouster, Inc.All claims unpatentablePTAB · Mar 13, 2025 · IPR2023-01457 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 44–48 and 50 are unpatentable as obvious over Imai, Higashi, and Grzesik; the Board did not reach the other grounds.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art The person of ordinary skill in the art is a hypothetical person who is presumed to know the relevant prior art. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). In determining the skill level, the Board may consider various factors including the “type of problems encountered in the prior art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. “In a given case, every factor may not be present, and one or more factors may predominate.” Id.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In relation to Grounds 1A to 1D, Petitioner and Patent Owner dispute whether the claimed “stop region” can encompass a partially transparent material as disclosed by Retterath. PO Resp. 21; Pet. Reply 7–8; PO Sur-Reply 10. Because we do not reach Grounds 1A to 1D in this decision (see § III.D, infra), we need not and do not decide whether a “stop region” may include a partially transparent material. See Realtime, 912 F.3d at 1375, supra.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“The term “coincident with” as used in the ’750 patent does not require perfect coincidence. To explain why, we provide an annotated version of Figure 2 of the ’750 patent below. In Figure 2 above, the rays of electromagnetic radiation indicated in red originate from illumination source 111, but they are not coincident with the corresponding aperture’s field of view, and instead they are absorbed or blocked by the aperture layer’s stop region. Ex. 1001, 3:51–63. As Figure 2 shows, out of five ray lines emitted by illumination source 111, only three are within its corresponding aperture’s field of view. This conveys an understanding that “coincident with” does not require perfect matching of the discrete spot of radiation from the illumination source and the aperture’s field of view.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner contends that multiple reasons would have prompted a POSITA to combine Grzesik’s cross talk absorption layer (corresponding to the claimed “aperture layer”) in the Imai-Higashi combination. Pet. 51–53. First, Petitioner contends that implementing Grzesik’s absorption layer in the Imai-Higashi combination would reduce cross talk consistent with Imai’s objective of improving resolution by allowing for more pixels to be used in a specified detection area. Id. at 51–52 (citing Ex. 1012, 4:65–5:6, 5:11–32; Ex. 1009 ¶¶ 6–7; Ex. 1003 ¶¶ 212–213). Second, Petitioner asserts that the combination would have been prompted as “the application of known techniques (Grzesik’s suggested improvement for a cross talk absorption layer to reduce secondary detection) to a known system (the primary Imai LiDAR system) ready for improvement to yield predictable results (benefits articulated above).” Id. at 52 (citing KSR, 550 U.S. at 417). Petitioner asserts that “a POSITA would have had a reasonable expectation of success at adapting Grzesik’s cross talk absorption layer to the scanning laser radar of the Imai-Higashi combination.” Pet. 52 (citing Ex. 1003 ¶ 214). Specifically, Petitioner contends that “Grzesik demonstrates the known benefits of implementing a cross talk absorption layer disposed on the detector array, with apertures of the cross talk absorption layer aligned with individual detectors, and describes using its cross talk absorption layer on Geiger-mode APDs (e.g., SPADs) as used by the Imai-Higashi combination.” Id. at 52–53 (citing Ex. 1003 ¶ 214). Patent Owner does not dispute Petitioner’s contentions concerning the motivation to combine Imai, Higashi, and Grzesik, or the reasonable expectation of success a POSITA would have had in making the combination. Petitioner shows by a preponderance of the evidence that a POSITA would have been motivated to combine Imai, Higashi, and Grzesik with a reasonable expectation of success.” slip op. at 39
Patent outcomesUS 11,190,750 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,190,750
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.