- PTAB · Aug 25, 2025 · IPR2025-00631 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1–3, 5, 7–9, 11–13, and 15–22 on all five asserted § 103 grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’027 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., 1–3, 5, 7–9, 11–13, and 15–22) of the ’027 patent, based on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have “possessed an undergraduate degree in chemistry, polymers, materials science, chemical engineering (or related field) and one to two years of experience with constructing and manufacturing tires, tire patches, tire decals/stickers and/or the like.” Pet. 8 (citing Ex. 1003 ¶¶ 6–11). According to Petitioner, “Additional education could compensate for less practical experience. Conversely, additional practical experience could compensate for less education.” Id. Patent Owner does not provide an alternate definition, but, “Patent Owner does not acquiesce to, and reserves the right to address, [Petitioner’s] definition of a POSA.” Prelim. Resp. 6 n.6. Petitioner’s proposed definition appears to be consistent with the disclosure of the ’027 patent, and we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself may “reflect[] an appropriate level” of ordinary skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“We disagree with Patent Owner’s contentions that these disclosures indicate that Wilson’s patch would not meet the construction of “barrier material composition.” None of these disclosures even suggests that the base of Wilson’s patch is rigid as Patent Owner suggests. To begin with, the fact that the housing is “more rigid” provides no information about the absolute rigidness of the patch. See Ex. 1009, 9:16–21. As for the disclosure that the patch is contoured (id. at 3:35–67), Patent Owner provides only attorney argument to support its contention that the contour demonstrates that Wilson’s patch must be so rigid that it cannot be meet the claim limitation. In contrast, Petitioner demonstrates that Wilson discloses using the exact same materials described in the challenged patent (see Ex. 1001, 6:33–58 (noting “[e]lastomeric materials useful for forming the intermediate layer 24 include but are not limited to gum rubber, vulcanized natural rubber SBR . . . or comparable materials”); Ex. 1009, 3:49–55 (noting the patch may be constructed from natural rubber (NR), a preferred mixture of chlorobutyl rubber and natural rubber (CR/NR), or a preferred mixture of SBR and natural rubber (SBR/NR)), and provides detailed testimony from its expert to support its contentions (see Ex. 1003 ¶¶ 114–119). On the current record, we find Petitioner’s reasoning and evidence to be persuasive, and find that Petitioner has shown sufficiently that Willson discloses or teaches this limitation.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,124,027 - Posco Co., Ltd. v. ArcelormittalInstitutedPTAB · Jul 23, 2025 · IPR2025-00371 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–25 based on all petitioned grounds, finding a reasonable likelihood that POSCO would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–25 of the ’227 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (POSITA) “would have had an undergraduate degree in materials science, manufacturing engineering, mechanical engineering, or equivalent knowledge, training, or experience, with two years of experience working in metallurgy.” Pet. 6 (citing Ex. 1003 ¶ 15). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’227 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any claim constructions. Pet. 3. We do not discern a need to construe explicitly any claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“35 U.S.C. § 103(a) as obvious over Takagi and Cornette, citing the Declaration of Dr. Miles for support. Pet. 1, 6–49 (citing Ex. 1003) (Petitioner’s Ground 1A). a. Claim 1 Petitioner argues that Takagi and Cornette teach or suggest each recitation of claim 1. Pet. 6–31. Petitioner argues, for example, that the preamble of claim 1 is not limiting or, alternatively, imparts no structural distinction from Takagi. Id. at 20–23 (citing, e.g., Ex. 1003 ¶ 48). Petitioner further argues that Takagi and Cornette teach forming or hot stamping to arrive at their products. Id. at 23 (citing, e.g., Ex. 1016 ¶ 36 (Takagi referring to “form[ing]” its products shape); Ex. 1014, 9–11 (Cornette referring to “hot stamping”); Ex. 1003 ¶ 48. Petitioner argues that Takagi teaches a strip of base steel having a first and second side. Id. at 23–24 (citing, e.g., Ex. 1003 ¶ 49; Ex. 1016 ¶¶ 13, 36. Petitioner argues that Takagi teaches a coating that is a “diffusion layer” having five phases as depicted by Takagi Figure 2A and explained by Takagi Table 1 (Takagi Fig. 4). Id. at 24–30 (citing, e.g., Ex. 1003 ¶¶ 50–59; Ex. 1016 ¶ 20, Fig. 2A). Petitioner argues that Takagi alone or as modified by Cornette teaches a coating thickness greater than than 30 µm. Id. at 30–31; Ex. 1014, 9; Ex. 1016 ¶ 35; Ex. 1003 ¶¶ 60–61. Petitioner explains why a person having ordinary skill in the art would have had reason to combine teachings of Takagi and Cornette with a reasonable expectation of success. Pet. 11–20 (citing, e.g., Ex. 1003 ¶¶ 31–47; Ex. 1016 ¶¶ 19–37, 47; Ex. 1014, 9; Ex. 1025, 5:17–20; Ex. 1026, 7; Ex. 1034 ¶ 13; Ex. 1055 ¶¶ 2, 7, 14–15, 18, Fig. 3). Based on our review and consideration of the current record, we determine that the information presented sufficiently supports, for purposes of institution, Petitioner’s assertions that Takagi and Cornette teach or suggest each limitation of claim 1. See Pet. 6–31. We therefore determine Petitioner has met its burden to show a reasonable likelihood it would prevail in demonstrating that claim 1 would have been obvious over Takagi and Cornette.” slip op. at 12
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,326,227 - Posco Co., Ltd. v. ArcelormittalInstitutedPTAB · Jul 23, 2025 · IPR2025-00370 · APJ Brian D Range · IPR · Institution
The Board instituted IPR of claims 1–30 on all twelve asserted obviousness grounds, finding a reasonable likelihood that POSCO would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–30 of the ’602 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’602 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any claim constructions. Pet. 3. We do not discern a need to construe any claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200” slip op. at 9
- BurdenInstituted
“determine that the information presented sufficiently supports, for purposes of institution, Petitioner’s assertions that Takagi and Cornette teach or suggest each limitation of claim 1. See Pet. 6–33. We therefore determine Petitioner has met its burden to show a reasonable likelihood it would prevail in demonstrating that claim 1 is obvious over Takagi and Cornette.” slip op. at 12
Claim constructioncites KSR · GrahamPatents in suitUS 10,961,602 - 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 - Askeladden L.L.C. v. Calabrese Stemer LLCAll claims unpatentablePTAB · Jun 17, 2025 · IPR2024-00368 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–9 are unpatentable as anticipated by Horie; the Board did not reach the alternative obviousness ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The definition of a person having ordinary skill in the art that we adopted in the Institution Decision is supported by the testimony of Dr. Akl. Ex. 1003 ¶ 22. Patent Owner states that it agrees with that definition, while also proposing a broader definition that includes those with other qualifications. PO Resp. 2. Although Patent Owner argues that “the supporting evidence [for its addition] is broadly present in the case, namely, in the Patent-in-Suit and the associated intrinsic evidence” (PO Sur-reply 3 n.6), Patent Owner does not direct us to any specific portion of the record. See United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in briefs.”); DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”). Additionally, while Patent Owner proposes expanding the definition, Patent Owner has not explained how that difference would materially affect the outcome of this proceeding. PO Resp. 2; PO Sur-reply 3 & nn. 4, 6. Dr. Akl uses Petitioner’s definition in his testimony (Ex. 1003 ¶¶ 22, 23) and Patent Owner makes no argument regarding how, if we adopted Patent Owner’s broader definition, Dr. Akl’s conclusions would be affected. Patent Owner’s use of its definition does not describe the conclusions of one “educated in general physics” differently to one of ordinary skill as defined by Petitioner. PO Sur-reply 6. Patent Owner does not present declarant testimony regarding knowledge of one of ordinary skill in the art under any definition.3 For these reasons, we maintain the definition of a person having ordinary skill in the art we adopted in the Decision on Institution: a person having ordinary skill in the art would have had experience in the hardware and software used in the field of securely transmitting and processing authorization requests over wired and wireless networks, such as requests for the processing of financial transactions, and a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related study, and would have one or two years of experience with wired and wireless 3 See infra footnote 5. as financial transactions. Less experience is necessary with additional education (e.g., a Master’s degree), and likewise, less education is necessary with additional work experience (e.g., 5–6 years).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Having analyzed the arguments and the evidence cited by Patent Owner, we do not agree. We begin with the claim language, which does not further describe the two transmission channels, let alone contradict the plain meaning. Ex. 1001, 6:5–19. Dependent claims also shed no additional light. Certain claims further specify transmission-channel-related requirements: that the first transmission channel be “selected from the group consisting of wireless and landline channels” (claim 7); that the request received via the first transmission channel be “provided via the Internet” (claim 5); or that the notifying step (via a second transmission channel) comprise “sending an SMS message to the customer (claim 2). Id. at 6:20–21, 6:28–29, 6:33–35. No claims further restrict claim 1 by describing both transmission channels. Id. Claim 9 requires that the notification be “substantially concurrent,” but nothing in the record establishes that substantially concurrent authorization and notification would require non-overlapping transmission channels, or that an overlap in the transmission channels, even if it did “encumber” the authorization process with the notification process, would prevent the processes from being “substantially concurrent.” While Patent Owner presents arguments about “the gist” of the invention (PO Resp. 4) and describes “an immediate separation of the two processes” as being disclosed by Figures 1 and 2 of the ’564 patent’s specification, we do not see in the specification an indication of a special disavowal of a broader scope. See Phillips, 415 F.3d at 1316–1317; PO Resp. 13 (“The specification of the ‘564 Patent does not express any intent to impart a novel meaning to the term distinct.”). Although we agree with Patent Owner that Figure 1 illustrates transmission channels that are separate and non-overlapping, we do not see any indication that this is more than a description of preferred embodiments or that there was a limitation of the invention to these embodiments, and our reviewing court “has repeatedly ‘cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.’” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015) (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1328 (Fed. Cir. 2002)). The specification similarly does not support that Figure 2 is intended as limiting.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Because we do not adopt Patent Owner’s construction (including considering its arguments regarding speed and security of transmissions in the ’564 patent), and instead adopt a construction encompassing overlapping between distinct transmission channels, see supra Section II.C.1, we determine that the requirement of limitation 1d that “the second transmission channel [must be] distinct from the first transmission channel” is disclosed by the different connections, different hardware elements, and independent operation of the two transmission channels identified in Horie, even though they overlap to some extent. Ex. 1006 ¶¶ 44, Fig. 1; Ex. 1003 ¶¶ 224–227; see PO Resp. 9. Lastly, Horie discloses that the authorization of a transaction occurs without requiring a response from the customer. Ex. 1006 ¶¶ 57, 58, 73; Ex. 1003 ¶¶ 232–233. For these reasons, we determine Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claim 1 was anticipated by Horie.” slip op. at 29
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“Obviousness Over Horie Petitioner additionally argues that each of claims 1–9 are obvious over Horie. Pet. 38–43. Because we determine that the challenged claims are anticipated by Horie, we do not address the parties’ arguments regarding those claims based on an alternate ground. See Boston Sci. Scimed, Inc. v. Cook Gp. Inc., 809 F. App’x 984, 990 (Fed. Cir. 2020) (“We agree that the Board need not address issues that are not necessary to the resolution of the proceeding.”).” slip op. at 34
Patent outcomesUS 8,783,564 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,783,564 - Askeladden L.L.C. v. Calabrese Stemer LLCAll claims unpatentablePTAB · Jun 17, 2025 · IPR2024-00369 · APJ Andreas Baltatzis · IPR · Final written decision
Claims 1–7 are unpatentable: claims 1–2 and 6–7 as anticipated, and claims 3–5 as obvious over Horie and Kobayashi.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time the invention was made “would have a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related study, and would have at least one or two years of experience with wired and wireless networks used to securely process requests for authorization of activity such as financial transactions.” Pet. 7–8 (citing Ex. 1003 ¶ 22). Additionally, Petitioner contends that “[l]ess experience is necessary with additional education (e.g., a Master’s degree), and likewise, less education is necessary with additional work experience (e.g., 5–6 years).” Id. Patent Owner does not oppose or comment on Petitioner’s definition of a POSITA. We determine this level of skill, with the exception of the open-ended phrase “at least,” which we remove from Petitioner’s proposal, comports with the qualifications a person would have needed to understand and implement the teachings of the ’706 patent and the prior art of record.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“construction.” Pet. 8. However, Petitioner explains the term “merchant’s” recited in independent claims 1 and 6. Id.; see Ex. 1001, 5:54, 5:56, 6:52. The possessive term “merchant’s” is not followed by a subject noun. See id. Petitioner contends that during prosecution of the parent patent, U.S. Patent No. 7,357,310 B2, “the applicant explained that the ‘secure network and the ‘payment guarantee’ channel are illustrated between the acquirer 8 [sic] and the modem 5 of the merchant’s terminal.’” Id. (citing Ex. 1013, 45). Accordingly, Petitioner asserts that both instances of “merchant’s” should be read as “merchant’s terminal.” Id. Institution Decision (Inst. Dec. 11), Petitioner adds that Patent Owner in a related proceeding explained “the expression may refer to anything in possession of, or under the control of the merchant, as the use of the possessive form implies.” Pet. Reply 2 (citing IPR2024-00367, Paper 10 (Patent Owner Response), 4)10. This explanation accords with Petitioner’s argument that “merchant’s” includes least a “merchant’s terminal.” Accordingly, we are persuaded by Petitioner’s argument and interpret “merchant’s” as at least including a “merchant’s terminal.”” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We need not construe explicitly any other claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe 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 12
- BurdenDecided for petitioner
“Petitioner argues that Horie anticipates claims 1 and 2. Pet. 21–30. As discussed above, Patent Owner has not presented any arguments in a Response. The burden however remains on Petitioner, so we examine the Petition’s contentions to determine if they show by a preponderance of the evidence that the claims are unpatentable. For the reasons set forth below, Petitioner has shown by a preponderance of the evidence that Horie anticipates claims 1 and 2.” slip op. at 12
Patent outcomesUS 7,954,706 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,954,706 - Askeladden L.L.C. v. Calabrese Stemer LLCAll claims unpatentablePTAB · Jun 17, 2025 · IPR2024-00367 · APJ Scott B Howard · IPR · Final written decision
Claims 1–4 are unpatentable as anticipated by Horie; the Board did not reach the alternative obviousness ground and dismissed Petitioner’s motion to exclude as moot.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We maintain the definition of a person having ordinary skill in the art that we adopted in the Institution Decision. First, it is supported by the testimony of Dr. Akl. Ex. 1003 ¶ 22. Second, Patent Owner states that it adopts that definition. PO Resp. 3. Third, to the extent Patent Owner proposes expanding the definition, Patent Owner has not explained how that difference would materially affect the outcome of this proceeding. Id. Fourth, Patent Owner does not point to sufficient evidence to support its position. Id. Although Patent Owner argues that “the supporting evidence [for its addition] is broadly present in the case, namely, in the Patent-in-Suit and the associated intrinsic evidence,” Patent Owner does not direct us to any specific portion of the record. See id. We decline to search the record to find the evidence that supports it. See United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in briefs.”); DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“As discussed below, Petitioner has shown by a preponderance of the evidence that Horie anticipates claims 1 under Patent Owner’s proposed construction. See Section II.E.3. Because we only construe limitations “to the extent necessary to resolve the controversy,” we do not expressly construe this limitation. See Nidec, 868 F.3d 1017 (quoting Vivid, 200 F.3d at 803).” slip op. at 12
- ExcludeMotion to exclude, deniedDenied
“preserved the objection by filing a timely motion to exclude. Mot. Exclude. Specifically, Petitioner argues that we should exclude Exhibit 2001 for three reasons: (1) it is untimely and prejudicial (37 C.F.R. §§ 42.23(b), 42.53(b); Fed. R. Evid. 403), (2) hearsay (Fed. R. Evid. 802), and (3) the best evidence rule (Fed. R. Evid. 1002). Id. The Stemer Declaration is used only to support Patent Owner’s arguments with respect to secondary considerations.5 PO Sur-reply 19–22; Ex. 2001; Ex. 2002. Because we do not reach obviousness, see infra Section II.F, we do not consider the Stemer Declaration, and we therefore dismiss the motion to exclude as moot.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
Patent outcomesUS 7,357,310 unpatentableClaim construction§ 102 anticipationcites Phillips · KSR · GrahamPatents in suitUS 7,357,310 - PTAB · Jun 6, 2025 · IPR2025-00300 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–12 on all asserted grounds and granted LG’s motion to join the Vizio IPR, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“ANALYSIS A. Institution of Inter Partes Review We instituted an inter partes review in the Vizio IPR on all challenged claims and all asserted grounds of unpatentability. Vizio IPR, Paper 12; see also Vizio IPR, Paper 1 (the “Vizio Petition”). Petitioner here challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the Vizio IPR. Compare Pet. 1–2, with Vizio Petition, 1–2. Petitioner also relies on an identical declaration from the same declarant as relied upon by the petitioner in the Vizio IPR. Mot. 1 (“[Petitioner] . . . relies upon the same expert declaration as relied upon in the Vizio IPR.”); Ex. 1003, 1 (cover page indicating Declaration of Henry Houh in support of the petition submitted in IPR2024-00723), 134 (signature page dated March 21, 2024). Because the grounds of unpatentability in the instant Petition are identical to those in the Vizio IPR, for the same reasons stated in our Decision to Institute in the Vizio IPR we institute inter partes review in this proceeding on the grounds presented in the Petition. See Vizio IPR, Paper 12, 12–41 (analyzing challenges in the Vizio Petition).” slip op. at 10
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because the “Petition is substantively identical to the petition in the Vizio IPR,” “challenging the same claims of the ’384 Patent on the same grounds while relying on the same prior art, arguments, and evidence,” and relying “upon the same expert declaration as relied upon in the Vizio IPR.” Mot. 1, 4–5. Petitioner represents that joinder will not impact the Vizio IPR schedule. Id. at 5–6. Petitioner also represents that it “explicitly agrees to take an ‘understudy’ role” and “will assume the primary role only if Vizio cease to participate in the Vizio IPR.” Id. at 6– 7.” slip op. at 11
NonePatents in suitUS 9,578,384 - 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
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.