- LG Electronics, Inc. / LG Electronics U.S.A., Inc. v. Multimedia Technologies Pte. Ltd.All claims unpatentablePTAB · May 12, 2025 · IPR2024-00353 · APJ Michael R Zecher · IPR · Final written decision
Claims 1–4, 6, 8–10, 12–17, and 19 are unpatentable as obvious over Kim, WD-Manual, and Bae, with Coburn added for claims 6, 12, and 19.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“See Pet. 123 (citing Ex. 1005 ¶¶ 267, 269). LG argues—and we agree—that, because Kim already provides functionality that updates the EPG information when the user performs a search, it would not require a leap of logic to incorporate Bae’s channel number selection window 330 that contains numbers 0 to 9, together with Coburn’s technique that predictably narrows the channel identifiers displayed based on the user selecting numbers sequentially, into Kim. See id. at 123–126. LG merely reiterates this position in the Reply and, therefore, does not shift its obviousness theory with respect to dependent claim 6. See Pet. Reply 38–41. c. Summary In summary, LG has demonstrated by a preponderance of the evidence that the subject matter of dependent claims 6, 12, and 19 would have been obvious over the combined teachings of Kim, WD-Manual, Bae, and Coburn.” slip op. at 85
- Skill levelSkill level petitioner adoptedDecided for petitioner
“2. Level of Skill in the Art In determining whether an invention would have been obvious at the” slip op. at 27
Patent outcomesUS 9,055,254 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,055,254 - Wiz, Inc. v. Orca Security Ltd.Institution deniedPTAB · May 5, 2025 · IPR2025-00095 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because Orca disclaimed all challenged claims 1–18, so no trial could be instituted on them.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“Based on our review of Exhibit 2002 and the USPTO’s public records, we conclude that a disclaimer of claims 1–18 of the ’855 patent under 35 U.S.C. § 253(a) has been recorded in the Office as of April 24, 2025. Ex. 2002. Because we cannot institute an IPR based on disclaimed claims and all of the challenged claims of the ’855 patent have been disclaimed, no trial will be instituted. See Gen. Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (Decision” slip op. at 3
NonePatents in suitUS 11,637,855 - Wiz, Inc. v. Orca Security Ltd.Institution deniedPTAB · May 5, 2025 · IPR2025-00093 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because Orca disclaimed all challenged claims 1–20, leaving no claims on which to institute IPR.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“Based on our review of Exhibit 2002 and the USPTO’s public records, we conclude that a disclaimer of claims 1–20 of the ’257 patent under 35 U.S.C. § 253(a) has been recorded in the Office as of April 24, 2025. Ex. 2002. Because we cannot institute an IPR based on disclaimed claims and all of the challenged claims of the ’257 patent have been disclaimed, no trial will be instituted. See Gen. Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (Decision” slip op. at 3
NonePatents in suitUS 11,582,257 - Wiz, Inc. v. Orca Security Ltd.Institution deniedPTAB · May 5, 2025 · IPR2025-00092 · APJ Garth D Baer · IPR · Institution
The Board denied institution because Orca disclaimed all challenged claims 1–19 before institution.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“Under 37 C.F.R. § 42.107(e), “[t]he patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent” and, if the statutory disclaimer is filed properly, “[n]o [IPR] will be instituted based on disclaimed claims.” A statutory disclaimer is “considered as part of the original patent” as of the date on which it is “recorded” in the USPTO. 35 U.S.C. § 253(a). “A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.” Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996); see also Raytheon Techs. Corp. v. General Elec. Co., 993 F.3d 1374, n.4 (Fed. Cir. 2021) (“Disclaimed claims are treated as if they never existed.”)” slip op. at 2
Discretionary denialPatents in suitUS 11,516,231 - Dell Inc. / Dell Technologies Inc. et al. v. Universal Connectivity Technologies, Inc.Institution deniedPTAB · Apr 24, 2025 · IPR2024-01480 · APJ Sharon Fenick · IPR · Institution
The Board denied institution under § 314(a), citing the Fintiv factors, including the earlier trial date and the petition’s not particularly strong merits, for claims 1–3, 10–13, 17, and 20–22.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“is our focus here. As stated, that trial is set to occur about six months before a final written decision would issue in this proceeding. The district court has stated that this trial date setting “cannot be changed without an acceptable showing of good cause.” Prelim. Resp. 4, 8 (quoting Ex. 2001, 5). We are not persuaded by Petitioner’s unsupported argument that the trial date is speculative. We also consider the fact that the median time-to-trial statistic projects a trial date of July 2025, earlier than the actual date set by the district court. Ex. 2001; Ex. 2007; Prelim. Resp. 8–9. The fact that the time-to-trial statistic is earlier than the scheduled trial date confirms that the scheduled trial date is credible and should be given weight. From this evidence, we are persuaded that we should rely on the scheduled trial date in the Lenovo Group litigation as the main indicator of a trial court reaching the merits of the invalidity of the patent-at-issue before we issue a final written decision. Accordingly, this factor strongly favors exercising discretionary denial. C.” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“1. Analysis of Petitioner’s Challenges a) Level of Ordinary Skill in the Art Petitioner asserts that one of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and three years of experience with data communications systems or interfaces, including at least some experience with serial or display data communications systems or interfaces. Additional education can substitute for less work experience, and vice versa. Pet. 14; see Ex. 1003 ¶ 41. Patent Owner does not dispute or comment on this proposal or propose an alternate level of ordinary skill in the art. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art, which is consistent with the evidence of record, including the asserted prior art and ’103 patent.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“same standard used in district courts, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2023). Under this standard, claim terms have their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Neither Petitioner nor Patent Owner asserts that any claim term requires claim construction (Pet. 14–15; Prelim. Resp.) and we do not discern that any claim term requires construction to arrive at our conclusions herein. c)” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“2. Conclusion Regarding the Merits The discussion above identifies weaknesses in the Petition that we have considered in our evaluation of Fintiv factors. While we do not make a determination regarding whether the Petition shows that there is a reasonable likelihood of prevailing were we to institute, for the reasons given, we determine that this Petition does not present particularly strong merits. G. Weighing the Fintiv Factors We have considered the circumstances and facts before us in view of the Fintiv factors. We take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” when evaluating these factors. Fintiv at 6. Because of the Sotera stipulation, factor 4 weighs strongly in favor of not exercising discretion. However, two other factors weigh in favor of exercising discretion, especially the trial date factor. The merits of Petitioner’s challenge are not particularly strong. A balanced assessment of the factors leads us to exercise discretion to deny the Petition. Therefore, we conclude that the evidence of record favors exercising our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review.” slip op. at 22
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 9,852,103 - Lenovo (United States) Inc. / Dell Inc. et al. v. Universal Connectivity Technologies, Inc.Institution deniedPTAB · Apr 17, 2025 · IPR2024-01482 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution on claims 1, 2, 4, 8–10, 12, 13, 15, 18–20, and 25, exercising § 314(a) discretion after balancing the Fintiv factors and finding the merits not particularly strong.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied
“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. Of the three district court proceedings, the Lenovo Group case, pending in the Eastern District of Texas, is the most significant to our analysis here. In the Lenovo Group case, Lenovo Group has not requested a stay. Prelim. Resp. 16. Patent Owner argues that the Lenovo Group case is not likely to be stayed based on that court’s low grant rate in other cases and the progress of that case in particular. Id. at 17. The district court in the HP case denied a stay without prejudice and stated that a stay could be reconsidered in the future depending on the outcome at the PTAB. Prelim. Reply 3. The Dell case has been stayed. Id. On this record, we decline to speculate as to how any of the involved district courts where no stay is pending might rule on any future motion to stay. Thus, we determine that, while one stay has been granted, the lack of a stay in the other underlying district court cases, especially the Lenovo Group case, is not sufficiently persuasive to weigh this factor against exercising discretion. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative), cautions against speculating whether the district court would grant a stay if one were requested. Therefore, this factor has a neutral effect on the overall balancing of the Fintiv factors. B. Proximity of Trial Date to Projected Statutory Deadline (Factor 2) The scheduled trial date for the Lenovo Group case is November 3, 2025, which is about six months prior to the expected date for the final written decision here (i.e., late April 2026). See Prelim. Resp. 20; IPR2024- 01429, Ex. 2002 (Lenovo Group case Docket Control Order), 1. Petitioner argues this trial date is uncertain. Prelim. Reply 3. Further, Petitioner focuses its argument on what it terms a “growing backlog” in the Eastern District of Texas and “associated scheduling uncertainty.” Id. at 4. Petitioner refers to the status of the HP case, which is currently set for trial on September 21, 2026, and the stay in the Dell case. Id. Patent Owner responds that “[b]oth the scheduled trial date and the date of trial [in the Lenovo Group case] based on median time-to-trial statistics occur months before a final written decision would be expected here.” Prelim. Sur-reply 4. Patent Owner asserts that the time-to-trial statistics for the Eastern District of Texas project a median time-to-trial of 21.9 months. Prelim. Resp. 20–21 (citing Ex. 2007, U.S. District Courts Federal Court Management Statistics–Profiles—September 30, 2024). This projection yields a trial date that is prior to the expected final written decision date of April 2026. Prelim. Sur-reply 4. As with the previous factor, the status of the Lenovo Group case is our focus here. As stated, that trial is set to occur about six months before a final written decision would issue in this proceeding. The district court has stated that this trial date setting “cannot be changed without an acceptable showing of good cause.” Prelim. Resp. 20. We are not persuaded by Petitioner’s unsupported argument that the trial date is uncertain. We also consider the fact that the median time-to-trial statistic discussed by both parties projects a trial date earlier than the actual date set by the district court. Ex. 2007; Prelim. Sur-reply 1. The fact that the time-to-trial statistic is earlier than the trial date set in the Lenovo Group case confirms that the schedule set by the district court is credible and should be given weight. From this evidence, we are persuaded that we should rely on the trial” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“E. Conclusion Regarding the Merits Petitioner does not present particularly strong merits. Petitioner’s arguments on the “bus limitation,” to succeed at trial, would require addressing a claim construction issue that was never addressed in the Petition and is arguably contradicted by the ’520 patent, which discloses transmitting packets representing a plurality of different control signals on a single bus. See Prelim. Sur-reply 2 (citing Ex. 1001, 7:34–38, 9:23–25, 9:50–54). Similarly, prevailing on the “modified protocol” issue would require proving that the HDMI–C protocol, which uses the same separate channel arrangement for CEC and DDC as standard HDMI, is sufficiently “modified” to meet the claim. Taking into account Patent Owner’s persuasive arguments supra in response, and for the reasons given, we do not find the merits of Petitioner’s position on either of these dispositive issues to be particularly strong.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner submits that it “for the purposes of this proceeding, the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction.” Pet. 8. Patent Owner does not dispute Petitioner’s position that no terms require construction. Prelim. Resp. 11–12. We determine there are no claim terms that need to be expressly construed for this Decision.” slip op. at 15
- Skill levelDecided for patent owner
“Patent Owner states that a person of ordinary skill “would have the equivalent of a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training and three years of work experience with data communications systems or interfaces, including at least some experience with serial or display data communications systems or interfaces .” Prelim. Resp. 12. The differences between these nearly-identical definitions are minor and immaterial to our decision. We regard either description as consistent with the challenged patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 7,856,520 - Lenovo (United States) Inc. / Dell Inc. et al. v. Universal Connectivity Technologies, Inc.Institution deniedPTAB · Apr 17, 2025 · IPR2024-01481 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), based on its Fintiv analysis, including the earlier district court trial date and weakness in the merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“date in the Lenovo Group case as the main indicator of a trial court reaching the merits of the invalidity of the patent-at-issue before we issue a final written decision. Accordingly, this factor strongly favors discretionary denial of the Petition.” slip op. at 11
- Skill levelSkill level board ownOther
“patent “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and three years of experience with data communications systems or interfaces, including at least some experience with serial or display data communications systems or interfaces.” Pet. 6. Patent Owner states that a person of ordinary skill “would have the equivalent of a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training and three years of work experience with data communications.” Prelim. Resp. 6–7. The differences between the definitions are minor and immaterial to our decision. We regard either description as consistent with the challenged patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner reports that it “does not believe that any specialized constructions are necessary.” Pet. 6. Patent Owner “does not disagree.” Prelim. Resp. 6. However, Petitioner’s challenge raises an implicit claim construction issue not addressed in the Petition that we discuss in our analysis below.” slip op. at 15
- BurdenNot reached
“example, claim 11 recites “receiving a synchronization symbol by a receiver indicating a packet type, each packet type having a different synchronization symbol.” Ex. 1001, 37:53–55. The other independent claims challenged in the Petition are similar in their recitation of a “synchronization symbol.” See id. at 37:9 (claim 1), 38:26–27 (claim 19). Petitioner argues this limitation is disclosed by Auld in view of MPEG-2 Part. 1. Pet. 15–16. Citing Figure 5 of Auld, reproduced in Section IV.C.1, supra, Petitioner asserts that “[t]he ‘sync codes’ in Auld consist of sequences of symbols that are used for synchronization, and therefore qualify as synchronization symbols.” Id. at 17. Patent Owner responds that “what the Petitioners identified as a ‘synchronization symbol’ [in Auld] is in what they have identified as a ‘packet of (or having) symbols.’” Prelim. Resp. 1. In contrast, “[i]n the specification and claims of the ’798 Patent, the claimed ‘synchronization symbol’ is separate from, and precedes, the claimed ‘packet of (or having) symbols.’” Prelim. Resp. 1. In disputing Petitioner’s identification in Auld of a synchronization symbol as claimed, Patent Owner points to Figure 9A of the ’798 patent (reproduced in Section II.C, supra), showing synchronization primitives 901 and 905 as separate from and transmitted before packets 902 and 907, respectively. Id. at 4. Patent Owner also relies on the description of the Figure 9A embodiment in the ’798 patent specification. Id. at 3–5. That description places transmission of the synchronization primitive encoded with the patent type before the control packet in the transmission sequence:” slip op. at 18
Claim constructionDiscretionary denialPatents in suitUS 7,746,798 - Align Technology, Inc. v. Dental Monitoring SASAll claims unpatentablePTAB · Apr 16, 2025 · IPR2024-00110 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 1, 2, and 4–6 are unpatentable as obvious over Kim, Invisalign, and Salah.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“The parties agree that the proposed levels of ordinary skill in the art are “not materially different.” PO Resp. 4; Reply 2. The difference, essentially, is that Patent Owner more explicitly describes the members on the interdisciplinary team, and argues that it would be necessary to consult with such individuals, particularly with persons experienced in dentistry or orthodontics, whereas Petitioner’s proposal states that one “could” consult with such individuals. However, Patent Owner’s argument that it would be necessary for a person of ordinary skill in the art to consult with an individual having experience in dentistry and/or orthodontics is narrower than Patent Owner’s proposed level of skill in the art, which describes “individuals familiar with medical imaging, dental imaging, dentistry, and/or orthodontics.” PO Resp. 4 (emphasis omitted, emphasis added). Neither party presents any argument explaining how the differences in the respective educational backgrounds and work experience in the proposed definitions affect the dispute. Having considered the parties’ respective arguments and the evidence of record, we adopt a modified version of the parties’ proposals, and determine for purposes of this Decision that a person of ordinary skill in the art would have an advanced degree, such as a Masters’ Degree or Ph.D. in computer science, computer engineering, electrical engineering, or a related field, with at least two years of work in computer vision, image analysis, medical imaging, or related areas. Further, a person of ordinary skill in the art could have less education but significant professional experience in one or more of these fields, and could be a member of an interdisciplinary team which would have included individuals familiar with medical imaging, dental imaging, dentistry, and/or orthodontics.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We are satisfied that Dr. Foroosh qualifies as a person of ordinary skill in the art. First, Dr. Foroosh has the required educational background, with, for example, a Bachelor of Science in Electrical Engineering, a Master of Science in Electrical Engineering, a Master of Science in Computer Science and Engineering, and a Ph.D in Computer Science. Ex. 1003, 7; Ex. 1002 ¶ 3. Second, Dr. Foroosh has the required work experience, with, for example, research in machine learning, deep learning, and neural networks, image and video processing and analysis, and computer vision. Ex. 1003, 2, 4–8; see also id. at 9–13 (list of projects), 14–29 (list of publications), 32 (list of interdisciplinary research); Ex. 1002 ¶¶ 2–5 (describing work experience), 6–9 (describing research experience). Dr. Foroosh has also been part of interdisciplinary research efforts including those relating to the medical or dental fields, such as, research on the intersection of computer vision and augmented reality in medical and surgical interventions. Ex. 1003, 32; Ex. 1002 ¶ 12. Dr. Foroosh describes a research project, Modeling and Visualization of Muscoloskeletal Structures in Dental CT-Scan (2006–2007), where he “developed algorithms for [threedimensional (‘3D’)] registration, modeling and visualization of maxilla and mandible of patients for dental surgery using Computer Aided Tomography (CAT) scanning.” Ex. 1002 ¶ 6. He describes another project for the National Science Foundation, which “was directed to the registration/alignment of dental CT scans of patients over a period of time during the treatment of a patient, with the purpose of improving the quality of 3D models, e.g., corrections and noise removal in 3D CT scans.” Id. ¶ 7. He was also a co-author on Alignment of Maxillofacial CT Scans to Stone- Cast Models Using 3D Symmetry for Backscattering Artifact Reduction, Proceedings of Medical Image Understanding and Analysis Conference (MIUA) (2006), and an adviser for a dissertation directed to “Sub-pixel Registration in Computational Imaging and Applications to Enhancement of Maxillofacial CT Data,” which “focused on registration and alignment of 2D images and 3D digitized data obtained by dental CT scans and dental imprints of a patient.” Id. ¶¶ 8, 9. Although Dr. Foroosh is not a dentist or orthodontist, we determine that the breadth of his background, as fully set forth in Exhibit 1003, qualifies him to provide testimony from the perspective of a person of ordinary skill in the art. In short, we agree with Petitioner that Dr. Foroosh has “ample experience with medical and dental imaging,” as set forth above. Reply 2 (citing Ex. 1002 ¶¶ 6–9; Ex. 1003, 14, 15, 21, 26, 32). Moreover, we are afforded broad discretion in assigning weight that is to be accorded expert testimony. See Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (“[T]he Board was well within its discretion to give more credibility to [one expert over another] unless no reasonable trier of fact could have done so.”); see also CTPG6 34–36. In the analysis that follows, when applicable, we weigh the credibility of Dr. Foroosh’s testimony, including with respect to Patent Owner’s arguments regarding Dr. Foroosh’s testimony on the Invisalign reference, and provide our reasons therefore.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“proposed constructions. As there is no dispute between the parties, and after reviewing the complete record, we determine that express construction of “interior tooth outline,” “exterior tooth outline,” and “shape of an orthodontic aligner” is not necessary for purposes of this Decision. Further, Patent Owner does not dispute Petitioner’s interpretation of limitations 1(1) and 1(2), or Petitioner’s identification of the corresponding function and structure in limitation 1(3). We agree with Petitioner that step 2 of claim 1 recites a conditional limitation, that, if met, is not needed to be performed. See, e.g., Cybersettle, Inc. v. Nat’l Arbitration Forum, 243 F. App’x 603, 607 (Fed. Cir. 2007) (“It is of course true that methods steps may be contingent. If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed.”). This is supported by the Specification: In one embodiment, the dentition image is the aligner image. In other words, the same updated image makes it possible not only to see the aligner outline 28 but also to see the dentition outline 16, through the aligner (FIG. 3). This single image therefore makes it possible to compare aligner 20 and dentition outlines. Advantageously, readjustment step 2), described later, is not needed. Ex. 1001, 6:15–20 (emphasis added). Further construction of limitations 1(1) and 1(2) is not necessary for purposes of this Decision.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“f) Conclusion Independent Claim 1 Therefore, we determine that, on the complete record, Petitioner has shown by a preponderance of the evidence that independent claim 1 would have been obvious over the combination of Kim, Invisalign, and Salah. 5. Remaining Claims Petitioner contends that the combination of Kim, Invisalign, and Salah teach the additional limitations of claims 2 and 4–6 and, in support, identifies certain passages and figures in the references and explains their significance with respect to the corresponding limitations. Pet. 34–46. Patent Owner does not separately challenge these contentions. See generally PO Resp. We have reviewed Petitioner’s contentions, which we find persuasive and adopt as our own. Therefore, we determine that Petitioner has also shown those claims to be unpatentable by a preponderance of the evidence. Id.” slip op. at 49
Patent outcomesUS 11,109,945 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,109,945 - HP Inc. / Dell Technologies Inc. et al. v. Universal Connectivity Technologies, Inc.Institution deniedPTAB · Apr 16, 2025 · IPR2024-01429 · APJ Karl D Easthom · IPR · Institution
The Board denied institution on all challenged claims, exercising § 314(a) discretion based on the Fintiv factors, especially the earlier district court trial date and weaknesses in the merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“is our focus here. As stated, that trial is set to occur about six months before a final written decision would issue in this proceeding. The District Court has stated that this trial date setting “cannot be changed without an acceptable showing of good cause.” Prelim. Resp. 17. We are not persuaded by Petitioner’s unsupported argument that the trial date is speculative. We also consider the fact that the median time-to-trial statistic projects a trial date of July 2025, earlier than the actual date set by the District Court. Ex. 2002; Ex. 2008; Prelim. Resp. 17–18. The fact that the time-to-trial statistic is earlier than the trial date set by Judge Gilstrap confirms that the schedule set by the District Court is credible and should be given weight. From this evidence, we are persuaded that we should rely on the trial date in the Lenovo Group litigation as the main indicator of a trial court reaching the merits of the invalidity of the patent-at-issue before we issue a final written decision. Accordingly, this factor strongly favors exercising discretionary denial. C.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“integrity of the system are best served by denying or instituting review” when evaluating these factors. Fintiv at 6. Because of the Sotera stipulation, factor 4 weighs strongly in favor of not exercising discretion. However, two other factors weigh in favor of exercising discretion, especially the trial date factor. The merits of Petitioner’s challenge are not particularly strong. A balanced assessment of the factors leads us to exercise discretion to deny the Petition. Therefore, we conclude that the evidence of record favors exercising our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review challenging claims 1, 2, 6, 7, 23, 25, 31, 53, 68, 70–72, 74, and 75. IV. CONCLUSION Upon consideration of the Petition, the Preliminary Response, and the evidence presented, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review challenging claims 1, 2, 6, 7, 23, 25, 31, 53, 68, 70–72, 74, and 75 of the ’307 patent. V. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 29
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties each raise facially valid points based on the claim language. Petitioner has the burden to show “[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104 b(3). Petitioner does not explain how, under its broad construction, the decoder “decodes the encoded data to recover application and control bits in accordance with a line code.” That is, if the encoding does not encode both “application and control bits,” then how can decoding “recover” both under Petitioner’s claim construction? It is not clear on this preliminary record whether the specification supports Petitioner’s broad claim construction. For this reason, Petitioner’s showing based upon the broad claim construction outlined above is not “particularly strong.” See Fintiv at 14–15. As discussed further below, Petitioner also presents a showing under Patent Owner’s more narrow construction. 3.” slip op. at 15
- Skill levelSkill level board ownOther
“Prelim. Resp. 6 (citing Ex. 2001 ¶ 15). Relying on its declarant, Dr. Wolfe, Petitioner proposes materially the same level. Pet. 5 (citing Ex. 1003 ¶¶ 26– 29). Based on a review of the record, we adopt the parties’ proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’307 patent.” slip op. at 14
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 7,187,307 - Align Technology, Inc. v. Dental Monitoring SASAll claims unpatentablePTAB · Apr 16, 2025 · IPR2024-00052 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 1, 2, 4, 7, 8, and 13–16 are unpatentable as obvious over Kim, Invisalign, Salah, and Maninis.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“conclusion based on underlying factual findings, including whether the reference was publicly accessible. Jazz Pharms., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018)). “A reference is considered publicly accessible ‘upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Id. at 1355–56 (citing In re Wyer, 655 F.2d 221, 226 (CCPA 1981)). “If accessibility is proved, there is no requirement to show that particular members of the public actually received the information.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988). In an inter partes review, the petitioner bears the burden of establishing that a particular document is a prior art printed publication. Jazz Pharms., 895 F.3d at 1356 (citing Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)).” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“the gap between them, can be resolved even with simple edge detection techniques,” so “[a]pplying more advanced techniques, such as the deep learning taught by Salah and Maninis, would have been expected to resolve the locations of each tooth’s edge and the corresponding aligner edges with even greater precision and accuracy.” Ex. 1048 ¶ 21. Further, Dr. Foroosh provides testimony that Maninis “teaches how contours of different strengths may be used advantageously to discern shapes of objects (and parts of objects) at varying levels of detail.” Ex. 1048 ¶ 24; see also Ex. 1002 ¶¶ 59, 97, 131. Accordingly, we are not persuaded that Salah teaches away from the combination.” slip op. at 64
Patent outcomesUS 11,049,248 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,049,248
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.