- Teladoc Health, Inc. v. Data Health Partners, Inc.Some claims unpatentablePTAB · Sep 12, 2025 · IPR2024-00616 · APJ Andreas Baltatzis · IPR · Final written decision
Claims 1–9, 11–17, 19, and 20 are unpatentable as obvious; claim 10 was not shown unpatentable because the petition lacked evidence supporting the proposed missing-data alert modification.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art relevant to the challenged claims, as of the earliest claimed priority date, “would have had at least a bachelor’s degree in a healthcare field as well as 1–2 years of experience with health information technology, including specific” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We agree with Patent Owner that the separately listed “goals, a plan of action, and thresholds,” should be considered distinct elements that cannot exist as the “same element” and therefore must be separately taught by the art. However, we agree with Petitioner that the claims and Specification describe the elements as interrelated whereby one may interact the other, even if they are separate elements. See Google, 92 F.4th at 1059 (“The proper construction of the term must allow for any of the five claimed inputs to potentially be used to calculate another claimed input.”).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“modify Douglas with Wager to “ensure that the assigned physician had the capacity to effectively treat the patient,” given the number and variety of patients in Douglas’s system. Pet. 54–55 (citing Ex. 1002, 6:6–14, 6:36–7:4, Figs. 51, 57; Ex. 1012 ¶ 129). Petitioner asserts that Wager addresses this problem by presenting the staff manager “with a suite of provider assignment options and alternatives, to automatically organize and drive assignment ratios and other assignment parameters and options with compliance, capacity, best practice and other criteria taken into account.” Id. at 54 (citing Ex. 1003 ¶¶ 6–7; Ex. 1012 ¶ 128). Petitioner further argues that the combination “would have also helped ensure that the assigned physician had the capacity to effectively treat the patient” because Wager’s interface effectively manages capacity issues against fluctuating clinical demands, thereby increasing quality of care for the patient. Id. at 55 (citing Ex. 1003 ¶¶ 6, 8, 20; Ex. 1012 ¶ 129). Patent Owner makes six different arguments that one of ordinary skill would not have been motivated to combine Douglas with Wager. PO Resp. 36–46. As discussed below, Patent Owner’s arguments do not persuasively rebut Petitioner’s articulated reasons to combine the references, because Patent Owner’s arguments are inconsistent with KSR’s “expansive and flexible approach” to obviousness. See 550 U.S. at 415.” slip op. at 44
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Finally, Patent Owner argues that “Douglas teaches against accomplishing its goals in an in-person setting like the one to which Wager is directed.” PO Resp. 43–45 (citing Ex. 1003 ¶¶ 4, 5, 11, 13; Ex. 2005 ¶ 108; Ex. 2006, 66:6–19). Patent Owner argues that Douglas’s system remotely monitors patients to avoid the costs and inconvenience of in-person programs. Id. (citing Ex. 1002, 1:29–35, 2:5–7; Ex. 2005 ¶ 109; Ex. 2006, 67:16–68:2). Patent Owner adds that Douglas’s teaching of office visits does not contradict the “remote only” argument, but instead, reinforces the patient’s desire to remain with their original physician, “instead of utilizing the proposed Douglas-Wager system to reassign the patient to a new physician.” Id. at 45. We are not persuaded by Patent Owner’s argument that Douglas teaches away from the combination with Wager. Douglas’s preference for remote medicine does not criticize or discourage office visits or the combination with Wager’s in-person setting. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from . . . alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.”). Accordingly, there is no teaching away from the combination with Wager’s computerized system for assigning patients to physicians.” slip op. at 47
Patent outcomesUS 11,144,554 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,144,554 - Samsung Electronics Co., Ltd. v. Netlist, Inc.Adverse judgmentPTAB · Sep 8, 2025 · IPR2025-00002 · APJ Norman H Beamer · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–20 after disclaimer and terminated the proceedings.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“DISCUSSION A party may request judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. Patent Owner has disclaimed, under 37 C.F.R. § 1.321, claims 1–20 of the ’024 patent and claims 1–20 of the ’319 patent, and explicitly requests that the Board enter adverse judgment against it with respect to those claims, the only claims at issue in these trials. Paper 26, 1.” slip op. at 2
NonePatents in suitUS 11,880,319 - Samsung Electronics Co., Ltd. v. Netlist, Inc.Adverse judgmentPTAB · Sep 8, 2025 · IPR2025-00001 · APJ Norman H Beamer · IPR · Adverse judgment
Adverse judgment was entered against Patent Owner on claims 1–20 after statutory disclaimer; the proceedings were terminated.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“DISCUSSION A party may request judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. Patent Owner has disclaimed, under 37 C.F.R. § 1.321, claims 1–20 of the ’024 patent and claims 1–20 of the ’319 patent, and explicitly requests that the Board enter adverse judgment against it with respect to those claims, the only claims at issue in these trials. Paper 26, 1.” slip op. at 2
NonePatents in suitUS 11,386,024 - 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 - Juniper Networks, Inc. v. Monarch Networking Solutions LLCAll claims unpatentablePTAB · Aug 6, 2025 · IPR2024-00561 · APJ Thu A Dang · IPR · Final written decision
Claims 1 and 6 are unpatentable under § 103(a) over Wainner and Bocci; the Board did not reach the Kamite and Bocci ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“that a person of ordinary skill in the art (POSITA) at the time of the invention of the ’775 patent would have had “a Bachelor of Science degree in electrical engineering, computer engineering, computer science, or a related subject, and three years of work experience in computer networking or a related field,” wherein “[l]ack of professional experience can be remedied by additional education, and vice versa.” Pet. 19 (citing Ex. 1040 ¶¶ 48–50). Patent Owner does not contest Petitioner’s proposal or offer an alternative. See PO Resp. 18. We apply Petitioner’s definition of a POSITA at the time of the claimed invention because, based on the record, this proposal is consistent with the ’775 patent, the asserted prior art, and is supported by the testimony of Dr. Bhattacharjee.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We find Patent Owner’s argument that a link is a physical connection (PO Resp. 19; PO Sur-reply 2) unavailing. In particular, claims 1 and 6 do not recite any requirement that a “link” is “physical.” Further, as Petitioner points out, there is no support in the ’775 patent for “defining ‘link’ as only a physical connection,” and Patent Owner does not point to any disclosure in the ’775 patent for such support. Pet. Reply 5. Although we agree with Patent Owner that a link can connect the interfaces of routers wherein routers are “physical devices” (PO Sur-reply 2), claims 1 and 6 do not require that the link physically connects the routers. That is, the claims merely require a pseudo-wire to comprise a link set up between routers to connect the routers. We agree with Petitioner that pseudo-wires comprising the connection links “can connect to any interface, ‘whether it is a physical, logical, or virtual interface.’” Pet. Reply 5 (citing Ex. 1043, 10; Ex. 1010, 3; Ex. 1042 ¶ 7). In fact, during oral argument, Patent Owner acknowledges that “[a] link, . . . , is not limited to a physical connection.” See Tr. 30:6–7.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“We find unavailing Patent Owner’s arguments that a pseudo-wire (“a type of emulated connection”) cannot be the same as a link (“a type of physical connection between router interface”). PO Resp. 20. In particular, claim 1 does not recite any requirement that a link be a physical connection, and thus, does not require that a link differs from the emulated connection of a pseudo-wire. As discussed above, during oral argument, Patent Owner acknowledges that a link is not limited to a physical connection. See Tr. 30:6–7. The ’775 patent itself provides no definition for “pseudo-wire” to support Patent’s Owner’s construction, and Patent Owner does not point to any disclosure in the ’775 patent for such support. As Petitioner points out, the ’775 patent instead supports a construction of “pseudo-wire” as comprising multiple links, wherein “[t]he first and second links constitute a first pseudo-wire pw1” and the second “pseudo-wire ps2 consists of the first link L1 and a second link L3.” Pet. Reply 7 (emphasis omitted) (citing Ex. 1001, 6:29–43). We find availing Petitioner’s argument that, even if links were “physical connections” as Patent Owner asserts, “then the pseudo-wire consists of . . . two physical connections,” no different from a link, contrary to Patent Owner’s assertion. Id. (citing Ex. 1042 ¶ 10). Although Patent Owner argues that the POSITA has always considered a pseudo-wire as a point-to-point link set up between input and output routers (PO Resp. 5–6), claims 1 and 6 do not recite that a pseudo-wire comprises a point-to-point link set up, and there is no support in the ’775 patent for specifically defining “pseudo-wire” as and limiting the term to a point-to-point link set up.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Bhattacharjee testified in support of Petitioner’s position that “[a] POSITA would have understood that the ordinary meaning of ‘link,’ . . . includes both physical and virtual connections, particularly in the context of pseudo-wires.” Ex. 1042 ¶ 7. We find availing Dr. Bhattacharjee’s testimony, which is supported by evidence. See id. (citing Ex. 1043, 10; Ex. 1010, 3 (disclosing that pseudo-wires encapsulate “data arriving at the PE-bound port (logical or physical)”), 4 (disclosing that the attachment circuit over which the pseudo-wire is established can be a “physical or virtual circuit”)). For the reasons discussed above, we conclude that a “link” is not required to be a physical connection. Instead, we determine that a “link” connects the interfaces of first and second routers, whether they are physical, logical, or virtual interfaces.” slip op. at 11
Patent outcomesUS 8,130,775 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,130,775 - Microsoft Corporation / Apple Inc. v. Proxense, LLCAll claims unpatentablePTAB · Aug 4, 2025 · IPR2024-01398 · APJ Thu A Dang · IPR · Final written decision
Claims 1, 5, 6, 8–11, 13, and 14 are unpatentable under § 103 over Giobbi ’157, Giobbi ’139, and Dua.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“Here, as Petitioner points out, “the Challenged Claims . . . do not recite ‘means for’ or ‘step for.’” Pet. Reply 1. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112(f). See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112(f) is not overcome. Although Patent Owner argues that “to claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function, amounts to pure functional claiming” (PO Sur-reply 5), the question here is whether “means for” analysis under § 112(f) applies at all. That is, as Patent Owner acknowledges, we must determine first whether the claim is even claiming a “means for” performing a function, “and then” determine whether the structure designed to perform that function is a general purpose computer. Id. As set forth in MPEP § 2181, the three-step analysis in determining whether § 112(f) applies begins with determining whether a claim limitation uses 1) the term “means” or “step” or 2) a nonce term used as a substitute for “means” that is a generic placeholder. See MPEP § 2181(I). We agree with Petitioner’s contentions during oral argument that Patent Owner’s arguments appear to be “based on adding a third general purpose computer structure category that triggers MPF treatment not supported by any case law.” Tr. 32:10–12. Accordingly, although Patent Owner argues that “claim 1 invokes § 112[(f)]” (PO Resp. 8, 18), and then provides extensive arguments with supporting testimony from Dr. Jakobsson as to the algorithm defining “local, secured information” (id. at 10–20 (citing Ex. 2016 ¶¶ 18, 38–51, 53–55)) and “algorithm of control logic 250” (id. at 21–25 (citing Ex. 2016 ¶¶ 37, 58)), the presumption that each of the terms is not subject to § 112(f) is not overcome; thus, we decline Patent Owner’s invitation to proceed to determining the corresponding algorithm.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“would have found it obvious to combine the teachings of Giobbi ’157 and Giobbi ’139 (Pet. 13–22), and furthermore combine the teachings of Dua to the teachings of Giobbi ’157 and Giobbi ’139 (id. at 23–25), citing Dr. Traynor’s testimony for support. In particular, Petitioner contends that a POSITA would have been motivated to integrate a PDK and RDC into a hybrid device by recognizing that Giobbi-157 and Giobbi-139 are “directed to similar operations,” “describe similar structures for performing those operations,” and have techniques that “are compatible with each other,” wherein combining the techniques “would have worked in the same manner already described in the references.” Id. at 21–22. Petitioner then contends that “Dua further corroborates the teachings of the Giobbi references and provides implementation details for integrating an RDC and PDK into the same device,” wherein “a POSITA would have been motivated to combine the teachings of the Giobbi references and Dua” because, at least “these references are all in the same field of endeavor.” Id. at 23–24. Patent Owner does not address separately Petitioner’s explanations and supporting evidence regarding Petitioner’s proffered reasoning to combine the references. See generally PO Resp. We have reviewed Petitioner’s explanations and supporting evidence regarding these limitations, as well as Petitioner’s proffered reasoning to combine the references, and we agree with and adopt them as our own. Pet. 13–25. Because Patent Owner does not separately address these limitations or Petitioner’s proffered reasoning for combining the references, the Petitioner’s positions regarding these limitations of independent claim 1 and the combination of references stand unopposed as a part of this trial. Based on the complete record presented, we determine that Petitioner has persuasively shown that a person of ordinary skill in the art would have combined Giobbi ’157, Giobbi ’139, and Dua as proffered in the Petition.” slip op. at 46
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Owner’s arguments that claim 1 invokes 35 U.S.C. § 112(f), with which, as discussed above, we do not agree. In particular, although Patent Owner argues that Giobbi ’157 does not teach or describe unlocking information from a service block in exchange for an access key “as required in the challenged claims” (PO Resp. 30), and thus fails to disclose the “enabling” function as required by the claim, claim 1 merely requires that one or more of the integrated RDC and integrated PDK enables one or more of an application, a function, and a service. In Giobbi ’157, when the PDK enters a proximity zone of the RDC, the RDC requests profile data stored within the PDK for authentication, and if the profile data received from the PDK is valid, the RDC “completes the transaction.” See Ex. 1005 ¶¶ 59–63. We find availing Petitioner’s reliance of Giobbi ’157’s completion of a transaction by the PDK and the RDC to gain access as teaching “enabling access to secure physical or digital assets,” i.e., “enabling one or more of an application, a function, and service” by at least one of a PDK and RDC. See Pet. 37. Based on the complete record presented, we determine that Petitioner has persuasively shown that the proposed combination of Giobbi ’157, Giobbi ’139, and Dua teaches “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service on one or more of the hybrid device and a device associated with the external RDC,” as recited in claim 1.” slip op. at 45
Patent outcomesUS 8,646,042 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,646,042 - Microsoft Corporation / Apple Inc. v. Proxense, LLCAll claims unpatentablePTAB · Aug 4, 2025 · IPR2024-00573 · APJ Thu A Dang · IPR · Final written decision
Claims 1, 5, 6, 8–11, 13, and 14 are unpatentable as obvious over Giobbi ’157, Giobbi ’139, and Dua; the Board did not reach the other grounds.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“Here, as Petitioner points out, “the Challenged Claims . . . do not recite ‘means for’ or ‘step for.’” Pet. Reply 1. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112(f). See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112(f) is not overcome. Although Patent Owner argues that “to claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function, amounts to pure functional claiming” (PO Sur-reply 5), the question here is whether “means for” analysis under § 112(f) applies at all. That is, as Patent Owner acknowledges, we must determine first whether the claim is even claiming a “means for” performing a function, “and then” determine whether the structure designed to perform that function is a general purpose computer. Id. As set forth in MPEP § 2181, the three-step analysis in determining whether § 112(f) applies begins with determining whether a claim limitation uses 1) the term “means” or “step” or 2) a nonce term used as a substitute for “means” that is a generic placeholder. See MPEP § 2181(I). We agree with Petitioner’s contentions during oral argument that Patent Owner’s arguments appear to be “based on adding a third general purpose computer structure category that triggers MPF treatment not supported by any case law.” Tr. 32:10–12. Accordingly, although Patent Owner argues that “claim 1 invokes § 112[(f)]” (PO Resp. 8, 18), and then provides extensive arguments with supporting testimony from Dr. Jakobsson as to the algorithm defining “local, secured information” (id. at 10–20 (citing Ex. 2016 ¶¶ 18, 38–51, 53–55)) and “algorithm of control logic 250” (id. at 21–25 (citing Ex. 2016 ¶¶ 37, 58)), the presumption that each of the terms is not subject to § 112(f) is not overcome; thus, we decline Patent Owner’s invitation to proceed to determining the corresponding algorithm.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“vi. Combining Giobbi ’157, Giobbi ’139, and Dua Petitioner further provides detailed explanations as to why a POSITA would have found it obvious to combine the teachings of Giobbi ’157 and Giobbi ’139 (Pet. 13–22), and furthermore combine the teachings of Dua to the teachings of Giobbi ’157 and Giobbi ’139 (id. at 23–25), citing Dr. Traynor’s testimony for support. In particular, Petitioner contends that a POSITA would have been motivated to integrate a PDK and RDC into a hybrid device by recognizing that Giobbi-157 and Giobbi-139 are “directed to similar operations,” “describe similar structures for performing those operations,” and have techniques that “are compatible with each other,” wherein combining the techniques “would have worked in the same manner already described in the references.” Id. at 21–22. Petitioner then contends that “Dua further corroborates the teachings of the Giobbi references and provides implementation details for integrating an RDC and PDK into the same device,” wherein “a POSITA would have been motivated to combine the teachings of the Giobbi references and Dua” because, at least “these references are all in the same field of endeavor.” Id. at 23–24.” slip op. at 46
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Owner’s arguments that claim 1 invokes 35 U.S.C. § 112(f), with which, as discussed above, we do not agree. In particular, although Patent Owner argues that Giobbi ’157 does not teach or describe unlocking information from a service block in exchange for an access key “as required in the challenged claims” (PO Resp. 30), and thus fails to disclose the “enabling” function as required by the claim, claim 1 merely requires that one or more of the integrated RDC and integrated PDK enables one or more of an application, a function, and a service. In Giobbi ’157, when the PDK enters a proximity zone of the RDC, the RDC requests profile data stored within the PDK for authentication, and if the profile data received from the PDK is valid, the RDC “completes the transaction.” See Ex. 1005 ¶¶ 59–63. We find availing Petitioner’s reliance of Giobbi ’157’s completion of a transaction by the PDK and the RDC to gain access as teaching “enabling access to secure physical or digital assets,” i.e., “enabling one or more of an application, a function, and service” by at least one of a PDK and RDC. See Pet. 37. Based on the complete record presented, we determine that Petitioner has persuasively shown that the proposed combination of Giobbi ’157, Giobbi ’139, and Dua teaches “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service on one or more of the hybrid device and a device associated with the external RDC,” as recited in claim 1.” slip op. at 45
Patent outcomesUS 8,646,042 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,646,042 - 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 - Microsoft Corporation v. Proxense, LLCAll claims unpatentablePTAB · Jul 17, 2025 · IPR2024-00407 · APJ Thu A Dang · IPR · Final written decision
Claims 1–20 are unpatentable under § 103 over Giobbi ’157, Giobbi ’139, and Dua; the Board did not reach the other three grounds.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“recite ‘means for’ or ‘step for.’” Pet. Reply 1. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112(f). See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112(f) is not overcome. Although Patent Owner argues that “to claim a means for performing a specific computer-implemented function[] and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming” (PO Sur-reply 3), the question here is whether “means for” analysis under 112(f) applies at all. As Petitioner explained during oral arguments, the parties agree that “the law has been consistent and clear” that “the proper framework for an MPF [means-plus-function] construction analysis consists of two steps,” with the first being “determin[ing] whether the limitation is or is not an MPF limitation,” and “[o]nly if the limitation is determined or deemed to be an MPF limitation . . . do you then proceed to step 2 . . . where you analyze the specification of the patent to identify structure corresponding to the MPF limitation.” Tr. 17:22– 18:5. That is, as Petitioner pointed out, “all of the case law identified by [Patent Owner] limits this general purpose computer analysis to the second step of the MPF analysis.” Id. at 19:5–7. Thus, although Patent Owner argues that “[s]ince claim 1 invokes § 112[(f)]” (PO Resp. 9, 22), and then provides extensive arguments with supporting testimony from Dr. Jakobsson as to the “algorithm defining ‘local, secured information’” (id. at 9–19 (citing Ex. 2014 ¶¶ 18, 36–37, 40–54)) and “algorithm of control logic 250” (id. at 19–22 (citing Ex. 2014 ¶¶ 55–57)), the presumption that each of the terms is not subject to § 112(f) is not overcome; thus, we decline Patent Owner’s invitation to proceed to determining the corresponding algorithm.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“would have found it obvious to combine the teachings of Giobbi ’157 and Giobbi ’139 (Pet. 12–22), and furthermore combine the teachings of Dua to the teachings of Giobbi ’157 and Giobbi ’139 (id. at 23–25), citing Dr. Traynor’s testimony for support. In particular, Petitioner contends that a POSITA would have been motivated to integrate a PDK and RDC into a hybrid device by recognizing that Giobbi-157 and Giobbi-139 are “directed to similar operations,” “describe similar structures for performing those operations,” and have techniques that “are compatible with each other,” wherein combining the techniques “would have worked in the same manner already described in the references.” Id. at 20–21. Petitioner then contends that “Dua further corroborates the teachings of the Giobbi references and provides implementation details for integrating an RDC and PDK into the same device,” wherein “a POSITA would have been motivated to combine the teachings of the Giobbi references and Dua” because, at least “these references are all in the same field of endeavor.” Id. at 23. Patent Owner does not address separately Petitioner’s explanations and supporting evidence regarding the remaining limitations in claim 1, or regarding the proffered reasoning to combine the references. See generally PO Resp. We have reviewed Petitioner’s explanations and supporting evidence regarding these limitations, as well as Petitioner’s proffered reasoning to combine the references, and we agree with and adopt them as our own. Pet. 29–33. Because Patent Owner does not separately address these limitations or Petitioner’s proffered reasoning for combining the references, the Petitioner’s positions regarding these limitations of independent claim 1 and the combination of references stand unopposed as a part of this trial. Based on the complete record presented, we determine that Petitioner has persuasively shown that the proposed combination of Giobbi ’157, Giobbi ’139, and Dua teaches the remaining limitations of claim 1, and that a person of ordinary skill in the art would have combined these references.” slip op. at 39
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“stored within the external PDK for authentication, wherein, if the profile data received from the external PDK is valid, the RDC completes the transaction, which includes enabling access to secure physical or digital assets. See Ex. 1005 ¶¶ 61, 63, Fig. 4. We are persuaded by Petitioner’s reliance on Giobbi ’157’s “transaction” wherein its completion “enabl[es] access to secure physical or digital assets,”’ i.e., “enables one or more of an application, a function, and service.” See Pet. 34. Based on the complete record presented, we determine that Petitioner has persuasively shown that the proposed combination of Giobbi ’157 in view of Giobbi ’139 and Dua teaches “one or more of (a) the integrated, RDC . . . and (b) the local, secured information stored by the integrated, secure memory enables one or more of an application, a function, and a service,” as recited in claim 1.” slip op. at 38
Patent outcomesUS 9,679,289 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,679,289
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.