- Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing deniedPTAB · Sep 15, 2025 · IPR2025-00005 · APJ John G New · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show a reasonable likelihood of prevailing on claims 1-4.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“In summary, we again conclude that Petitioner has failed to provide sufficient evidence to demonstrate that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the cited prior art references, in combination with Dr. Josefowicz’s relatively unsupported testimony concerning a skilled artisan’s ability to optimize various constituents and conditions, to arrive at the claimed invention. Petitioner has not pointed to any argument or unconsidered evidence of record that is sufficient to show that, in reaching its conclusion, the Board abused its discretion by basing its Decision on an erroneous interpretation of law, a factual finding not supported by substantial evidence, or an unreasonable judgment in weighing relevant factors. Arnold, 362 F.3d at 1340.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“teaches the tensile strengths of various types of copper-electroplated steel electrical cable wire of different properties, including high strength, hardness, low electrical resistivity, near zero strength, good leveling, and thermal stability, some of which fall within the claimed range of tensile strength of 30 to 40 kgf/mm2. Lowenheim, 196, Table II. However, none of these categories correspond to those copper foil properties recited in the claims, and Dr. Josefowicz’s testimony provides little guidance as to how a person of ordinary skill in the art would have known how to optimize the recited properties, and particularly so in combination with the teachings of Hirose and the other cited prior art references. Furthermore, as we noted in our Decision:” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“At the heart of this flaw is Petitioner’s argument, and Dr. Josefowicz’s opinion, that it would have been conventional in the art at the time of filing to vary the electrolyte concentration, electrolysis plating parameters, temperature, and the use of organic and inorganic additives, in order to obtain a copper foil with tensile strength and elongation values falling within the claimed ranges as these ranges were well known, at least since 1974. Ex. 1003 ¶ 63. This statement is largely unsupported by evidence of record, with the sole exception of Table 2 of Lowenheim, which, as Patent Owner points out, provides tensile strengths well outside the claimed range. Petitioner provides insufficient guidance as to how a person of ordinary skill in the art would have known which parameters to vary, or how to vary them, to provide the foil of Hirose with a tensile strength or weight deviation within the claimed range. Dr. Josefowicz’s statement that this would result from routine optimization, and was “conventional” may or may not be true, but it is insufficiently supported by evidence of record to be persuasive. Id. (emphasis added) (footnote omitted).” slip op. at 6
§ 103 obviousnessPatents in suitUS 9,457,541 - Anthony Inc. v. Controltec, LLCInstitutedPTAB · Aug 25, 2025 · IPR2025-00559 · APJ Barry L Grossman · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds after finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After considering the Petition, the Preliminary Response, and the evidence of record, based on the analysis in this Decision, we determine that Petitioner has demonstrated that there is a reasonable likelihood that at least one of the challenged claims is unpatentable. A decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). Accordingly, we institute an inter partes review of all challenged claims and on all grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill in the art would have had “a bachelor’s degree in mechanical engineering, electrical engineering, or a comparable field and at least three to five years of experience related to heating, ventilating, air conditioning, and refrigeration (HVAC&R) systems.” Pet. 4 (citing Ex. 1003 ¶¶ 31–35). Dr. Henze’s Declaration testimony states he considered some of the factors listed above. Ex. 1003 ¶¶ 31–35). Dr. Henze testifies that, in his opinion, the level of ordinary skill is as stated by Petitioner. Id. at 31. He also states that “[s]uch experience could be obtained through research and study in a graduate program or through comparable exposure through industry employment, and additional years of experience could substitute for the advanced-level degree.” Id. Patent Owner does not assert a level of ordinary skill, nor does Patent Owner dispute Petitioner’s definition of the level of ordinary skill. See generally Prelim. Resp. For purposes of this Decision, based on the prior art, the sophistication of the disclosed technology in the ’181 patent, and Dr. of ordinary skill.9” slip op. at 13
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“Petitioner asserts that nine terms are “mean-plus-function claim terms.” Pet. 4–10. As required by our rule, (37 C.F.R. § 104(b)(3)), for each of the mean-plus-function claim terms, Petitioner identifies the function as well as the specific portions of the ’181 patent’s specification that describe the corresponding structures. Id. Patent Owner does not comment on Petitioner’s proposed means-plus- function claim constructions. See generally Prelim. Resp. Thus, for purposes of this initial decision, we will adopt the means-plus-function constructions proposed by Petitioner.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“We do not perceive the need to construe any additional claim limitation. Our conclusion concerning instituting an inter partes review would be unaffected by a determination that the preambles of the claims are limiting. Accordingly, for this initial Decision to institute an inter partes review, the words “display” or “frame,” and the term “display case” will be given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,207,181 - PTAB · Aug 25, 2025 · IPR2025-00340 · APJ Matthew S Meyers · IPR · Institution
The Board instituted IPR on claims 1–7 across all asserted grounds, finding a reasonable likelihood that Barnard renders at least one challenged claim obvious.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“At this stage of the proceeding, we disagree with Patent Owner’s construction that requires “distinguishing among different types of targets” in order to obtain “target specific feature information” because claim 1 does not recite such a limitation. Instead, we agree with Petitioner that the plain and ordinary meaning “requires target specific feature information for distinguishing specific targets from background clutter, not other targets.” Reply 2. We note that claim 1 does not require distinguishing between different targets nor does it include any recitation directed to a particular “learning process (e.g., Generalized Hebbian Analysis),” as Patent Owner implies. Sur-reply 2. We also agree with Petitioner that the doctrine of claim differentiation supports Petitioner’s construction because claim 7 adds a limitation not present in claim 1 by reciting “distinguish[ing] two target classes or a plurality of target classes from one another.” Ex. 1001, 12:28–30. Moreover, the Specification contemplates selecting target specific feature information to distinguish specific targets from background clutter without distinguishing among different types of targets because the Specification explains that the inventor tested the preferred classification system using target objects “of several different types” such that “the preferred embodiment needed to find receptive fields common to all types.” Id. at 9:41–48 (emphasis added). Accordingly, we find Petitioner’s proposed construction of “target specific feature information to distinguish specific targets from background clutter” as having its plain and ordinary meaning to be reasonable and consistent with the intrinsic record. Thus, we adopt it for purposes of this Decision. On this limited record, and at this early stage of the proceeding, the Board has not made a final determination on the construction of “target specific feature information to distinguish specific targets from background clutter.” We encourage the parties to further develop this argument (such as to the extent it would differentiate the prior art) and their positions at trial.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“4. Conclusion for Claim 1 After reviewing Petitioner’s assertions with respect to claim 1 and the supporting evidence (as summarized above), we determine that Petitioner has shown, sufficiently at this stage, that Barnard teaches all the limitations of claim 1. See Pet. 12–34. We therefore determine that Petitioner is reasonably likely to prevail in showing that claim 1 is unpatentable under § 103 as obvious over Barnard. We have also reviewed the arguments and evidence of record addressing claims 2, 3, 6, and 7 in Ground 1, and similarly find that for purposes of institution, Petitioner has demonstrated a reasonable likelihood that Barnard would have rendered these claims obvious. See Pet. 34–39. On this basis, we institute inter partes review of all challenged claims on all grounds in the Petition. See SAS Inst. Inc., 584 U.S. at 368; 37 C.F.R. § 42.108(a).” slip op. at 35
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“On this record, we find Petitioner has shown sufficiently that Barnard teaches using “target specific feature information” to distinguish specific targets from background clutter, as required by claim 1. See Pet. 16–32. As set forth above, on the current record we do not construe the claim limitation reciting “target specific feature information to distinguish specific targets from background clutter” to require “distinguishing among different types of targets based on tailored feature selection,” as Patent Owner suggests. Prelim. Resp. 27. Instead, we agree with Petitioner that the plain and ordinary meaning of the claim limitation simply “requires target specific feature information for distinguishing specific targets from background clutter, not other targets.” Reply 2; Section II.C.1. Based on the current record, and consistent with this understanding, we find Petitioner has shown sufficiently that Barnard uses various calculated data statistics to select a set of features and an associated target detection threshold in order to distinguish specific targets from background clutter. See Pet. 16–17 (citing Ex.1003 ¶¶ 65–68 (citing to Ex. 1005, 2:30–36, 5:36–49, 6:62–68)). Petitioner explains that Barnard “discard[s] or exclude[es] features that have a statistical distribution width exceeding a predetermined amount,” and as such, “Barnard selects features (i.e., the remaining features not excluded) that are used to distinguish specific targets from background clutter.” Id. at 17 (citing Ex.1005, 2:28–39; Ex. 1003 ¶ 66). Patent Owner argues that “[a]t best, Barnard generically applies the same set of features to all potential targets, and then filters out those deemed unreliable due to statistical variance,” and relying on the Declaration testimony of Dr. Majumder, contends that “[t]his is not the same as selecting features based on their discriminative power for specific target classes, as required by the claims.” Prelim. Resp. 21 (citing Ex. 2007 ¶ 71); see also id. at 25 (“The reference makes no distinction between different types of targets and does not describe using different feature sets or decision boundaries tailored to particular target classes.”), 30 (“Petitioner’s attempt to equate Barnard’s one size-fits-all filtering with the claim’s target-specific discrimination reflects a misunderstanding of both the reference and the invention.”). However, on the current record, Patent Owner’s argument is unpersuasive at least because it is based on an overly restrictive construction of the limitation “target specific feature information to distinguish specific targets from background clutter.” As discussed above, claim 1 does not require distinguishing between different targets or between specific target classes. See Section II.C.1. Although Patent Owner argues that “there is no mention of ‘target” slip op. at 31
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,894,639 - PTAB · Aug 22, 2025 · IPR2025-00343 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–6 and 8–13 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
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 . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“and 4) does not address Petitioner’s first two arguments and evidence, which, on this record, appear to show that Bucknell’s prioritized queue length is based on buffered data in either, or both, of a first and second iteration. Therefore, at this stage of the proceeding, we need not reach Patent Owner’s assertions as to the third alternative argument and evidence Petitioner provides, namely the combination of examples 2), 3), and 4). For completeness, however, we acknowledge that Bucknell does not expressly combine examples 2), 3), and 4), mainly because example 4) only refers back to example 2). However, we note that from a plain reading of Bucknell’s written description it may not be a significant leap to understand that the disclosed combination of examples 2) and 4), with first and second portions 90 and 95 populated in reverse order as taught in example 4), that this combination could be subsequently modified by example 3) to provide a “second iteration . . . based on buffered data.” Ex. 1006 ¶¶ 26–27. In other words, on the current record it is not clear why “the unused resource” of Bucknell’s second portion 95 cannot also “be made available,” to the first portion 90 if the order was simply reversed per the combination of examples 2) and 4). 3. Conclusion as to Claim 1 In summary, we find Petitioner’s arguments and evidence sufficient to show a reasonable likelihood that claim 1 is unpatentable over Eckert in view of Bucknell and Lohr-1. On the current record, we find that Bucknell discloses “a first iteration” based on receiving the priority values for logical channels associated with the MAC-d flows. Ex. 1006 ¶ 26. And, as discussed above, Bucknell’s described “priorities,” are plural, just like the claimed “received parameters.” Ex. 1001, 14:11; Ex. 1006 ¶ 26. In on a priority.” See Ex. 1001, 13:57–14:16. As to the issue of whether the Petition provides sufficient explanation or motivation to combine Bucknell’s examples 2), 3), and 4), which is an alternative argument to Petitioner’s other mappings for limitation [1.9] which we find sufficient for institution, we leave this alternative mapping issue for development at trial. See Pet. 55 (Petitioner explaining that “Bucknell describes additional ways that limitation [1.9] is disclosed, based on the teachings of examples 2 and 4 (discussed previously) in view of example 3.”).” slip op. at 27
- Prior constructionPrior construction adoptedDecided for petitioner
“Petitioner points out that in IPR2022-01127 the Board “preliminarily determined that a subset of the plurality of radio bearers” means “less than all of the plurality of radio bearers.” Pet 12 (citing Ex. 1019, 18–19). Petitioner explains that, in the present proceeding, it has applied “the prior art in accordance with that construction; however, in view of the asserted grounds, no claim term requires express construction to find the Challenged Claims unpatentable.” Id. (citing Nidec 868 F.3d 1017). Patent Owner neither disputes the prior construction of “a subset of radio bearers,” nor offers additional constructions. To the extent necessary, and in accordance with our prior determination, we construe “a subset of the plurality of radio bearers” to mean “less than all of the plurality of radio bearers.” At this early stage of the proceeding, no claim terms are disputed and we need not construe any other terms for purposes of institution.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not expressly dispute Petitioner’s definition of a person of ordinary skill in the art. See generally Prelim. Resp. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’138 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 12
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,292,138 - Therabody, Inc. v. Datafeel Inc.Institution deniedPTAB · Aug 21, 2025 · PGR2025-00026 · APJ Lisa L Tsang · PGR · Institution
The Board denied institution because Petitioner did not show claim 4 more likely than not unpatentable on either obviousness or § 112 ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 324(a), a post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Post-grant review is available for patents that issue from applications that at one point contained at least one claim with an effective filing date on or after March 16, 2013. See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), §§ 3(n)(1), 6(f)(2)(A). Upon considering the arguments and evidence, we conclude that the information presented shows it is not more likely than not that at least one challenged claim of the ’174 patent is unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt the level of ordinary skill in the art articulated by Petitioner because, based on the current record, it is consistent with our review and understanding of the technology and descriptions in the ’174 patent and prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our analysis below would be the same regardless of whether we adopt Petitioner’s or Patent Owner’s proffered level of skill in the art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner and Patent Owner agree that no claim terms need construction. Pet. 14; Prelim. Resp. 6. After reviewing the evidence and arguments presented by the parties, we determine that it is not necessary to expressly construe any claim terms because doing so would not change the outcome of our analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting 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
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“of Choi to support its argument that an ordinarily skilled artisan would have understood Choi’s infrared lamp housing to define a concave shape as claimed. See Pet. 61–62. With only this explanation and evidence from Petitioner and Dr. Jenson, however, we cannot not discern how these portions of Choi would have so apprised an ordinarily skilled artisan. For example, the side view of the infrared lamp housing, illustrated in Figure 5 reproduced below, shows the housing having a convex, rather than concave, shape. See Ex. 1008, Fig. 5. Furthermore, paragraphs 20 and 48 refer to the housing’s “circular” shape and outer periphery and also “tubular” shape. See id. ¶¶ 20, 48. But these descriptions, either alone or together with Figure 5, also do not support adequately a finding that Choi’s housing is concave. Choi’s teachings in paragraphs 20 and 46 regarding the lamp housing guiding or directing infrared light from the lamp to irradiate the skin of a user, without more, are similarly deficient. See id. ¶¶ 20, 46. And although Dr. Jensen appears to equate “concave” with “inner circular,” he does not provide the basis for his testimony or explain what “inner circular” means, particularly in the context of distinguishing a convex shape from a concave shape. See Ex. 1002 ¶ 197. Accordingly, we determine there is insufficient evidence to support Petitioner’s conclusory statements that an ordinarily skilled artisan would have understood Choi’s infrared lamp housing to define a concave shape as claimed.” slip op. at 23
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 12,036,174 - Nintendo Co., Ltd. / Nintendo Of America Inc. v. American GNC CorporationAll claims unpatentablePTAB · Aug 20, 2025 · IPR2024-00668 · APJ Lisa L Tsang · IPR · Final written decision
Claims 1 and 4 are unpatentable as obvious over Smith, Chan, and Bernstein (claim 1), Smith, Chan, Bernstein, Irwin, and Merhav (claim 4), and Tingleff, Chan, and Bernstein (claims 1 and 4).
RulingsFinal written decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b) (emphasis added). Accordingly, a petition for inter partes review may be considered only if, among other things, it “identifies all real parties in interest,” and no real party in interest was served with a complaint alleging infringement of the challenged patent more than one year before the petition was filed. 35 U.S.C. § 312(a)(2). “[T]he IPR petitioner bears the burden of persuasion to demonstrate that its petitions are not time-barred under § 315(b) based on a complaint served on a real party in interest more than a year earlier.” Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018). However, “an IPR petitioner’s initial identification of the real parties in interest should be accepted unless and until disputed by a patent owner,” who, in turn, “must produce some evidence that tends to show that a particular third party should be named a real party in interest.” Id. at 1242, 1244 (footnote omitted).” slip op. at 8
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Based on the arguments and evidence of record, we determine that Patent Owner has not produced sufficient evidence to support a finding that STMicro should be named a real party in interest to this proceeding. At best, Patent Owner’s evidence and arguments establish only that Patent Owner previously filed a complaint against STMicro, asserting that STMicro infringed patents related to the ’648 patent (see generally Ex. 2012); and that Patent Owner served a subpoena to compel STMicro to testify and produce documents in Patent Owner’s infringement suit against Petitioner (see generally Ex. 2014). The record before us does not demonstrate a relationship between Petitioner and STMicro sufficient to show that STMicro is a real party in interest. See Worlds, 903 F.3d at 1242, 1244 (“[A]n IPR petitioner’s initial identification of the real parties in interest should be accepted unless and until disputed by a patent owner,” who, in turn, “must produce some evidence that tends to show that a particular third party should be named a real party in interest.” (footnote omitted)).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 5 (citing Ex. 1002 ¶¶ 12–14). Patent Owner counters that the skilled artisan would have had “at least a ‘Master’s Degree in Electrical or Electronics Engineering, and approximately five years of relevant experience in the development of control systems for inertial navigation, MEMS semiconductor processing, and analog circuit design.’” PO Resp. 18 (citing Ex. 2019 ¶ 57). We adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with our review and understanding of the technology and descriptions in the ’648 patent and prior art of record, and we apply it in our obviousness evaluations below. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that we would reach the same conclusions applying either Petitioner’s or Patent Owner’s definition of the level of skill in the art.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“We find unavailing Petitioner’s reliance on Catalina to support its claim construction position. See Reply 2. In particular, although Petitioner contends the body of the claims “define[s] a structurally complete invention,” Petitioner does not explain how the claims additionally “use[] the preamble only to state a purpose or intended use for the invention,” as Catalina further requires. See Catalina, 289 F.3d at 808 (“a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention” (emphasis added)). In this regard, we discern no reason to interpret “[a] micro inertial measurement unit” as reciting only a purpose or intended use because the term, on its face, uses “micro inertial measurement” as an adjective that conveys further structural details of the unit. Accordingly, on the complete record, and for the reasons set forth in our Institution Decision, we maintain our construction that “[a] micro inertial measurement unit” recited in the preamble is limiting and requires a micro-sized inertial measurement unit, and that the structures recited in the limitations of the claims are limited to structures implemented as MEMS devices. Dec. 21–24.” slip op. at 14
Patent outcomesUS 6,671,648 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,671,648 - Nintendo Co., Ltd. / Nintendo Of America Inc. v. American GNC CorporationAll claims unpatentablePTAB · Aug 20, 2025 · IPR2024-00667 · APJ Jennifer S Bisk · IPR · Final written decision
Claims 1 and 3 are unpatentable under § 103 over Fujiyoshi, Kumar, Cox, and Townsend, and independently over Mitamura and Townsend.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerNot time barredDecided for petitioner
“other things, it “identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). “[T]he IPR petitioner bears the burden of persuasion to demonstrate that its petitions are not time-barred under § 315(b) based on a complaint served on a real party in interest more than a year earlier.” Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018). However, “an IPR petitioner’s initial identification of the real parties in interest should be accepted unless and until disputed by a patent owner,” who, in turn, “must produce some evidence that tends to show that a particular third party should be named a real party in interest.” Id. at 1242, 1244 (footnote omitted). Whether a non-party is a real party in interest is a “highly fact-” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have possessed a bachelor’s degree in electrical engineering or similar degree, with two to three years of practical experience designing and/or implementing systems that include sensors for measuring movement, such as acceleration and rotational position. . . . A skilled artisan could also have had more formal education and less practical experience, or vice versa. Pet. 5 (citing Ex. 1002 ¶¶ 12–14). Patent Owner states that “[a] person of ordinary skill in the art with respect to the ’122 Patent would have at least a five years of relevant experience in the development of control systems for inertial navigation, MEMS semiconductor processing, and analog circuit design.” PO Resp. 18 (citing Ex. 2019 ¶ 57). We adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with our review and understanding of the technology and descriptions in the ’122 patent and prior art of record, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that we would reach the same conclusions applying either Petitioner’s or Patent Owner’s definition of the level of skill in the art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). In this context, claim terms “are generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (citations omitted) (en banc). “The Board is required to construe ‘only those terms ... that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party argues that any claim term requires construction. Pet. 6; PO Resp. 18. Accordingly, we do not explicitly construe any term.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Record evidence supports Petitioner’s contentions that a skilled artisan would have had reason to look to Kumar for further implementation details of a circuit that performs functions like those performed by Fujiyoshi. See Pet 24–26. For example, Dr. Young testifies that a person of ordinary skill in the art would have recognized that Kumar discloses the details, at a granular level, of Fujiyoshi’s capacitive sensing systems and would have looked to Kumar for understanding of how to implement Fujiyoshi’s system. Ex. 1002 ¶ 145. Patent Owner does not point to persuasive evidence to rebut this opinion. Moreover, Petitioner cites to Kumar, not only for an explicit disclosure of capacitive pickoff signals, but also for its disclosure of both DC bias and AC carrier signals and recognizing the applicability of an AC carrier pickoffs that operates without DC bias. Pet. 24–26 (citing Ex. 1005 3:65–4:2, 6:29–36). We credit Dr. Young’s testimony on this issue and agree with Petitioner that a person of ordinary skill in the art, looking at Fujiyoshi’s description of capacitive sensing systems, would be motivated to look to Kumar for its more detailed teachings of the implementation details of such systems and would combine these details to arrive at limitation 1(a). We determine that Petitioner has shown, by a preponderance of the evidence, that one of ordinary skill in the art would have been motivated to combine Fujiyoshi and Kumar in the manner argued by Petitioner.” slip op. at 37
Patent outcomesUS 6,508,122 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,508,122 - Zhuhai Cosmx Battery Co., Ltd. v. Ninge Amperex Technology LimitedInstitution deniedPTAB · Aug 20, 2025 · IPR2025-00385 · APJ Debra L Dennett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 were anticipated by Nishikawa or obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” For the reasons set forth below, upon considering the Petition and Preliminary Response, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to at least one challenged claim. Accordingly, we deny the Petition and decline to institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that A person of ordinary skill in the relevant art would typically hold an advanced degree in chemistry, material science, and/or a related discipline, and have at least two years of experience with designing and/or fabricating battery separators or have an equivalent level of education, training, and experience. Pet. 5. Patent Owner “adopts the definition proposed by Petitioner” for the purposes of the Preliminary Response. Prelim. Resp. 22. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s unopposed definition because it is consistent with the specification. We note that neither party indicated that the result would change under any different definition.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Absolute plastic deformation rate” and “relative plastic deformation rate” are the only claim terms disputed in this proceeding, and are clearly defined in the Specification and in claim 1. See Spec. 4:22–27, 4:47–54; 25:31–37. Because we determine that claim construction is not necessary to decide whether to institute, we do not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner’s arguments are unconvincing. Petitioner points to nothing in Nishikawa that allows a POSITA to determine L2 (defined as “a length of 4 Tensile strength is measured as force per units area, such as MPa or psi. One MPa equals one N/mm2. Nishikawa Table 1 discloses tensile strength in N/cm. Ex. 1004 Table 1. Petitioner makes calculations to convert the reported N/cm into N/m2 and then to GPa, but provides no explanation for why tensile strength is reported in N/cm or how it was measured. See Pet. 31. the porous substrate after the porous substrate is stretched to breakage and docked along the fracture caused by the breakage and flattened”) or L2 – L0. See generally Pet., Ex. 1004. Petitioner and its expert, Dr. Pecht, fail to adequately explain why tensile strength divided by Young’s modulus is “a proxy for L1 – L2” or why such a proxy is sufficient to disclose the limitation as stated. Instead, we are required to rely on “approximations” and “estimates” with insufficient explanation of why such they are appropriate or adequate. See Pet. 26, 30, 32; see also Ex. 1003 ¶¶ 97, 105–108, 111.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,964,927 - PTAB · Aug 19, 2025 · IPR2025-00431 · APJ Donna M Praiss · IPR · Institution
The Board instituted review of claims 1–7 and 14–17 on the petition’s grounds, finding the preliminary record showed a reasonable likelihood that at least one challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” For the reasons set forth below, upon considering the Petition and Preliminary Response, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to at least one challenged claim. Accordingly, we grant the Petition and institute inter partes review.” slip op. at 2
Nonecites Phillips · KSR · GrahamPatents in suitUS 11,799,131 - PTAB · Aug 12, 2025 · IPR2025-00405 · APJ Debra L Dennett · IPR · Institution
The Board instituted IPR on claims 1–6 and 12–26 because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2025). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” For the reasons set forth below, upon considering the Petition, Preliminary Response, and the evidence of record as presently developed, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to at least one challenged claim. Accordingly, we grant the Petition and institute an inter partes review.” slip op. at 2
- BurdenNot reached
“3. Analysis On the preliminary record, we agree with Patent Owner that Petitioner fails to demonstrate that it meets the threshold showing under 35 U.S.C. § 314(a) for institution of trial with respect to Grounds 4C, 5C, and 6C.” slip op. at 91
Nonecites Phillips · KSR · GrahamPatents in suitUS 11,769,910
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.