• Hesai Technology Co., Ltd. v. Ouster, Inc.All claims unpatentable
  PTAB · Mar 17, 2025 · IPR2023-01456 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1–3, 5–8, and 10–17 are unpatentable as obvious over Imai and Higashi, with Grzesik or Pacala for dependent claims; remaining grounds were not reached.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner asserts that a person of ordinary skill in the art would have had an undergraduate degree in mechanical or electrical engineering or physics, plus 2–3 years of experience in LiDAR design. Pet. 3 (citing Ex. 1003 ¶¶ 72–77). Patent Owner argues that a POSITA would have had an undergraduate degree in mechanical or electrical engineering and two to three years of work experience with electro-optical and electro-mechanical devices or systems, with, at a minimum, at least one year of work experience was with LIDAR designs, where less work experience may be compensated by a higher level of education or vice versa. PO Resp. 4 (citing Ex. 2009 ¶ 60). We agree with and will apply Patent Owner’s statement of the level of ordinary skill in the art. This level of ordinary skill is reflective of the education and experience that would have been required to understand the problems and solutions identified in the ’381 patent and the prior art. Okajima v. Bourdeau, 261 F.3d 1350 (Fed. Cir. 2001).” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “The term “coincident with” as used in the ’381 patent does not require perfect coincidence. To explain why, we provide an annotated version of Figure 2 of the ’381 patent below. In Figure 2 above, the rays of electromagnetic radiation indicated in red originate from illumination source 111, but they are not coincident with the corresponding aperture’s field of view, and instead they are absorbed or blocked by the aperture layer’s stop region. Ex. 1001, 3:61–4:5. As Figure 2 shows, out of five ray lines emitted by illumination source 111, only three are within its corresponding aperture’s field of view. This conveys an understanding that “coincident with” does not require perfect matching of the discrete spot of radiation from the illumination source and the aperture’s field of view.” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We begin with the language of the claims. The claims merely require that the “plurality of pixels are arranged in a second arrangement, proportional to the first arrangement.” Ex. 1001, 17:30–31. There are no other specific requirements about “first arrangement” or the “second arrangement” and no specific requirement about what kind of “proportional[ity]” is required. Thus, the language of the claims does not provide a basis for Patent Owner’s narrow reading, nor does it necessarily preclude it.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Petitioner identifies multiple reasons to make this combination. First, with respect to Higashi’s bandpass filter, Petitioner argues that “a POSITA would have been prompted to implement Imai’s system to include a bandpass filter for the received light (as suggested by Higashi) so as to advantageously pass through only light of the operational wavelength of the corresponding laser emitter and ‘eliminate the effect of background light.’” Id. at 60 (citing Ex. 1011 ¶ 86; Ex. 1003 ¶ 256). Petitioner contends that “the resulting combination would advantageously filter out interfering light sources along the optical path of each of the detector pixels, thereby improving accuracy, improving the signal-to-noise ratio, and reducing the likelihood of false detections at the detector pixel.” Id. at 61. Second, Petitioner argues that “a POSITA would have been motivated to arrange multiple SPADs in each of Imai’s detector pixels (e.g., pixels 1- 16 in Imai’s FIG. 11) so that “erroneous detection of pixels[] can be reduced” and improved accuracy is achieved.” Id. (citing Ex. 1011 ¶ 71–72; Ex. 1003 ¶ 257; Ex. 1009 ¶ 48). Third, Petitioner contends that using Higashi’s multi-SPADs in Imai’s detector pixels would have led to uninterrupted performance when an individual diode is quenched, and would have furthered Imai’s objective of “inhibiting the increase of detection obtaining time” because multi-SPADs facilitate high speed data processing as they can take turns to receive the incoming photons. Id. (Ex. 1009 ¶¶ 6–7; Ex. 1011 ¶¶ 71, 72; Ex. 1027 ¶¶ 3– 4; Ex. 1003 ¶ 258). Fourth, Petitioner asserts that the combination “was simply the” slip op. at 45

  Patent outcomesUS 11,178,381 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,178,381
• Phison Electronics Corporation v. Vervain, LLCInstitution denied
  PTAB · Mar 17, 2025 · PGR2024-00047 · APJ Steven M Amundson · PGR · Institution

  The Board denied institution because Petitioner did not show it was more likely than not that any of claims 1–7 was unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “to institute a post-grant review. We may not institute a post-grant review unless we determine that “the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2024).” slip op. at 2

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not shown unpatentable

    “2. PETITIONER’S CONTENTIONS Petitioner challenges the ’546 patent’s claims as encompassing a” slip op. at 20

  • Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable

    “2. PETITIONER’S CONTENTIONS Petitioner challenges the ’546 patent’s claims as failing to satisfy” slip op. at 26

  • Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not shown unpatentable

    “2. PETITIONER’S CONTENTIONS Petitioner challenges the ’546 patent’s claims as failing to satisfy” slip op. at 36

  § 101 eligibility§ 103 obviousness§ 112 disclosureDiscretionary denialcites Alice · Mayo · Phillips · KSR · Graham · Nautilus
  Patents in suitUS 11,830,546
• Hesai Technology Co., Ltd. v. Ouster, Inc.All claims unpatentable
  PTAB · Mar 13, 2025 · IPR2023-01421 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 21 and 23–34 are unpatentable as obvious over Pacala and Droz, or Pacala, Droz, and Villenueve; the Board did not reach the Hall-based grounds.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
  • Skill levelSkill level patent owner adoptedDecided for patent owner
  • Expert testimonyPatent owner expert discountedPetitioner expert creditedDecided for patent owner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

  Patent outcomesUS 11,175,405 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,175,405
• Hesai Technology Co., Ltd. v. Ouster, Inc.All claims unpatentable
  PTAB · Mar 13, 2025 · IPR2023-01457 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 44–48 and 50 are unpatentable as obvious over Imai, Higashi, and Grzesik; the Board did not reach the other grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art The person of ordinary skill in the art is a hypothetical person who is presumed to know the relevant prior art. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). In determining the skill level, the Board may consider various factors including the “type of problems encountered in the prior art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. “In a given case, every factor may not be present, and one or more factors may predominate.” Id.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “In relation to Grounds 1A to 1D, Petitioner and Patent Owner dispute whether the claimed “stop region” can encompass a partially transparent material as disclosed by Retterath. PO Resp. 21; Pet. Reply 7–8; PO Sur-Reply 10. Because we do not reach Grounds 1A to 1D in this decision (see § III.D, infra), we need not and do not decide whether a “stop region” may include a partially transparent material. See Realtime, 912 F.3d at 1375, supra.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “The term “coincident with” as used in the ’750 patent does not require perfect coincidence. To explain why, we provide an annotated version of Figure 2 of the ’750 patent below. In Figure 2 above, the rays of electromagnetic radiation indicated in red originate from illumination source 111, but they are not coincident with the corresponding aperture’s field of view, and instead they are absorbed or blocked by the aperture layer’s stop region. Ex. 1001, 3:51–63. As Figure 2 shows, out of five ray lines emitted by illumination source 111, only three are within its corresponding aperture’s field of view. This conveys an understanding that “coincident with” does not require perfect matching of the discrete spot of radiation from the illumination source and the aperture’s field of view.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Petitioner contends that multiple reasons would have prompted a POSITA to combine Grzesik’s cross talk absorption layer (corresponding to the claimed “aperture layer”) in the Imai-Higashi combination. Pet. 51–53. First, Petitioner contends that implementing Grzesik’s absorption layer in the Imai-Higashi combination would reduce cross talk consistent with Imai’s objective of improving resolution by allowing for more pixels to be used in a specified detection area. Id. at 51–52 (citing Ex. 1012, 4:65–5:6, 5:11–32; Ex. 1009 ¶¶ 6–7; Ex. 1003 ¶¶ 212–213). Second, Petitioner asserts that the combination would have been prompted as “the application of known techniques (Grzesik’s suggested improvement for a cross talk absorption layer to reduce secondary detection) to a known system (the primary Imai LiDAR system) ready for improvement to yield predictable results (benefits articulated above).” Id. at 52 (citing KSR, 550 U.S. at 417). Petitioner asserts that “a POSITA would have had a reasonable expectation of success at adapting Grzesik’s cross talk absorption layer to the scanning laser radar of the Imai-Higashi combination.” Pet. 52 (citing Ex. 1003 ¶ 214). Specifically, Petitioner contends that “Grzesik demonstrates the known benefits of implementing a cross talk absorption layer disposed on the detector array, with apertures of the cross talk absorption layer aligned with individual detectors, and describes using its cross talk absorption layer on Geiger-mode APDs (e.g., SPADs) as used by the Imai-Higashi combination.” Id. at 52–53 (citing Ex. 1003 ¶ 214). Patent Owner does not dispute Petitioner’s contentions concerning the motivation to combine Imai, Higashi, and Grzesik, or the reasonable expectation of success a POSITA would have had in making the combination. Petitioner shows by a preponderance of the evidence that a POSITA would have been motivated to combine Imai, Higashi, and Grzesik with a reasonable expectation of success.” slip op. at 39

  Patent outcomesUS 11,190,750 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,190,750
• Hesai Technology Co., Ltd. v. Ouster, Inc.No claims unpatentable
  PTAB · Mar 13, 2025 · IPR2023-01422 · APJ Jon M Jurgovan · IPR · Final written decision

  The Board held claims 1–2, 4–9, 11–14, 16–17, and 19–25 not shown unpatentable over the asserted obviousness grounds, principally because the combinations lacked claimed limitations.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Considering the applicable factors in light of the parties’ contentions, we adopt the following level of ordinary skill in the art, which we apply in this Decision: A person of ordinary skill in the art would have had an undergraduate degree in mechanical or electrical engineering and two to three years of work experience with electro-optical and electro-mechanical devices or systems, relevant to light ranging systems. Less work experience would have been compensated by a higher level of education or vice versa. The work experience would have included at least one year relevant to light ranging systems including LIDAR with a rotor-stator structure. We determine that this level of skill is consistent with the problems and solutions identified in the ’515 patent and the prior art. See, e.g., Okajima v. Bourdeau, 261 F.3d 1350 (Fed. Cir. 2001); Ex. 1001, 1:30–3:48; Ex. 1004 ¶¶ 3–10; Ex. 1005, 1:1–2:31; Ex. 1006, 1:1–2:60; Ex. 1007, 1. We also determine that the proposed level of skill is reflective of the education and experience a person of ordinary skill would have had. Ex. 1003 ¶¶ 39–41; Ex. 2004 ¶¶ 67–68.” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “We determine that the claimed “stator circuit board” and “stator assembly” are separate and distinct elements in claims 1 and 14 because they are set forth as separate elements in these claims. See Ex. 1001, 48:27–29, 48:37–42, 50:8–10. Similarly, claim 22 recites “a stator circuit board assembly” that includes as subcomponents “a first circuit board,” “a second circuit board,” and a “stator assembly” which are separate and distinct subelements. Id. at 51:49–59. “Where a claim lists elements separately, ‘the clear implication of the claim language is that those elements are ‘distinct component[s]’ of the invention.” Becton, Dickinson and Co. v. Tyco Healthcare Gr., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (citing Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404–05 (Fed. Cir. 1996)). This construction is confirmed by the ’515 patent’s specification. For example, the specification states that stator assembly 644 is affixed to circuit board 622, and, consistent with this statement, Figures 6A and 6D show them as separate elements joined together. Ex. 1001, 28:28–31, 30:16–24. Contrary to Petitioner’s contention, the specification’s stating that the stator elements are “built onto” or “integrated on” circuit boards (or assemblies containing them) does not mean that the stator assembly and circuit board are the same thing. Pet. Reply 1 (citing Ex. 1001, 4:19–22, 4:28–31). Rather, the specification describes the stator elements as part of the stator assembly which is coupled to a circuit board, as follows: VII. Integrated Electric Motor According to certain embodiments, an electric rotary motor can be integrated directly onto the circuit boards. The motor can have a "pancake" or "axial" design having a planar rotor assembly on a rotor board that opposes a planar stator assembly on an opposing stator board. The stator and rotor assemblies of the electric motor can be integrated onto the boards of the rotary actuator 608, i.e., the elements of the electric motor are one of many components on the surface of the printed circuit boards and thus a separate motor module is not required for LIDAR system 600. For example, referring back to FIG. 6D, stator assembly 644 can include an annular arrangement of multiple stator elements 644(i), e.g., vertically oriented solenoids (having their longitudinal axes perpendicular to the surface of the board) that are affixed (e.g., using an adhesive) to a board of the lower circuit board assembly 620 (e.g., board 622) or to a soft magnetic core that is then affixed to the lower circuit board assembly 620. Ex. 1001, 30:16–22. Thus, the ’515 patent’s specification expressly states that the stator elements of the stator assembly can be affixed to a printed circuit board, and thus the stator assembly is not the same thing as the board. Other parts of the specification are consistent with this view. See, e.g., id. at 4:54–57, 5:14–18, 6:50–53, 16:22–25.” slip op. at 23

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We have construed claim 1’s limitation 1(g) to require “stator circuit board” and “stator assembly” that are separate and distinct elements. See § III.C.1, supra. Johnson discloses coil windings that are formed by patterning interleaved structures in a multi-layered printed circuit board (PCB) forming the stator platform 330, and interconnecting them in groups with vias filled with conductive material. Ex. 1005, 11:66–13:57. Figs. 3C–3D; Ex. 2004 ¶¶ 138–139. We agree with Patent Owner that a POSITA would have considered the coil windings to be subcomponents of Johnson’s stator platform 330, which do not define a separate and distinct “stator assembly . . . coupled to a stator circuit board.” Ex. 2004 ¶ 139. In other words, the “printed” conductive tracks and traces would have been considered part of the PCB, not something separate. Id. Although Petitioner contends that Johnson discloses other embodiments in which a stator assembly is comprised of wires wound around a magnetic core (Pet. Reply 14–15 (citing Ex. 1005, 3:30–39, 4:56– 5:7; Ex. 1050 ¶ 30)), Petitioner does not show that Johnson discloses that those embodiments are coupled to a stator circuit board as recited in claim 1’s limitation 1(g). Petitioner did not rely on Pacala, Pardhan, nor Zhang to cover the deficiencies of Johnson. Accordingly, for the above reasons, we determine that Petitioner has” slip op. at 41

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Patent Owner’s arguments are persuasive. Johnson, Pardhan, and Zhang all disclose transformer coils positioned inside of the rotor/stator elements of the motor. Specifically, Johnson’s Figure 3B shows a transformer coil 310b positioned inside rotor elements (magnets 320, 322, 324, 326), and Figure 3C shows the corresponding transformer coil (unnumbered) inside of the stator coils defined by conductive structures. Ex. 1005, 11:51–60, 13:26–40. Similarly, Pardhan shows in Figure 7B a transformer 740a, 740b positioned inside of rotor/stator elements 738a, 738b, and suggests that a smaller rotary transformer is desirable. Ex. 1006, 20:64–21:13. Likewise, Zhang’s Figures 2 and 3 show an electrical power transmission unit including first coupling coil (5) and second coupling coil (unnumbered) positioned inside of motor coil (2). Ex. 1007, 4–5. Against the teachings of Johnson, Pardhan, and Zhang, Petitioner argues that putting the transformer coils outside of the stator coils would have been an obvious design choice. Pet. 50–51, 54–55. However, as Patent Owner noted, “merely stating that a particular placement of an element is a design choice does not make it obvious.” PO Resp. 50 (citing Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1067–70, 1069 n.4 (Fed. Cir. 2018); Ex. 2004 ¶ 186). That Johnson, Pardhan, and Zhang all disclose the transformer coils inside of the rotor/stator elements of the motor suggests that there were good reasons for doing this in their configurations. Zhang expressly teaches that one such reason is to avoid interference with power transmission.15 Ex. 1007, 3. Thus, according to Zhang, moving transformer coils outside of the rotor/stator elements in Petitioner’s combination would undesirably interfere with power transmission such that a POSITA would not have pursued the combination. Accordingly, we find that claim 22’s limitation 22(h) is missing from the combination of Pacala, Johnson, Pardhan, and Zhang.” slip op. at 53

  Patent outcomesUS 11,287,515 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,287,515
• Anker Innovations Ltd. v. Powermat Technologies Ltd.Instituted
  PTAB · Feb 20, 2025 · IPR2024-00996 · APJ Ken B Barrett · IPR · Institution

  The Board instituted review of claims 13–18 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. The art or arguments presented in the Petition are not “substantially the same” as those previously presented to the Office when there are differences between them that are material to the Office’s prior consideration of the art and arguments. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023).” slip op. at 9

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends that: [A] person of ordinary skill in the art at the time of the alleged invention (“POSITA”) would have had a bachelor’s degree or higher in electrical engineering, at least 3 years of experience designing or researching electronic circuits, and familiarity with power electronics and inductive power transfer circuits. Pet. 8 (citing Ex. 1003 ¶ 20). Patent Owner states that, “[f]or purposes of this preliminary response, Patent Owner adopts the Petitioner’s proposal.” Prelim. Resp. 17. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 18

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner contends that “[a]ll claim terms should be construed according to the Phillips standard,” and “[h]ere, given the remarkable overlap between the preferred embodiment of the ’461 patent and the prior art/predictable combinations articulated in Grounds 1A–3, Petitioners submit that no claim elements need a formal construction for purposes of resolving the controversy in this proceeding.” Pet. 8. Patent Owner states that, “[t]o simplify the issues before the Board, Patent Owner has not asserted any claim constructions in this preliminary response and adopts the Petitioner’s position that ‘[a]ll claim terms should be construed according to the Phillips standard.’” Prelim. Resp. 17 (quoting Pet. 8). On this record and for purposes of this decision, we determine that no” slip op. at 19

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “At this preliminary stage of the proceeding, we do not agree with Patent Owner’s arguments. Patent Owner does not cite to evidence, such as expert testimony, to support its implied argument that Olson’s measured current is “fundamentally different” from the current received by the primary coil. See Prelim. Resp. 31–32. Petitioner’s declarant, Dr. Woods, on the other hand, testifies, inter alia, that “[t]he ‘[c]urrent measured by current measure block 226 is used in the calculation of power, which as depicted in FIG. 14, measures the ‘power in’ provided to transmit block 214/primary coil 54.” Ex. 1003 ¶ 37 (citing Ex. 1004 ¶¶ 74–75, Fig. 14) (first alteration added); see also, e.g., id. ¶ 42 (Dr. Woods testifying that the measured current to the power supply “is the current driving the external antenna 52, via the transmit block 214 and to the primary coil 54.” (citing Ex. 1004 ¶¶ 74–75, 112, Fig. 14)). Paragraph 75 of Olson, cited in support of that testimony, provides: “The power in is gauged by the power generated by charging unit 50 and is determined by multiplying the voltage of the internal voltage of charging unit 50, e.g., the voltage of a battery or batteries internal to charging unit 50, by the current driving external antenna 52.” Ex. 1004 ¶ 75 (emphasis added). We note that external antenna 52 includes primary coil 54. See, e.g., Fig. 14. Dr. Woods’ testimony is, at this stage, unrebutted. Patent Owner also argues that “Petitioner fails to provide any evidence regarding the function of Olson’s microprocessor 212 in relation to measuring input power,” and that, “[w]hile Olson describes a power calculation in paragraph [0075], Olson does not describe this power calculation as performed by microprocessor 212.” Prelim. Resp. 32 (citing Pet. 16; Ex. 1004 ¶ 72) (first alteration added). At this preliminary stage of the proceeding, we do not agree with Patent Owner’s arguments regarding the microprocessor. Although Patent Owner does not bear the burden to show patentability, we observe that Patent Owner does not suggest that there is another component in Olson’s external charging device that might perform the admittedly-disclosed power calculation. See Prelim. Resp. 32–33. Dr. Woods testifies that microprocessor 212 receives the measured current and the input voltage of the charging device, and, from those values, calculates power in. See Ex. 1003 ¶¶ 43–44 (citing, inter alia, Ex. 1004 ¶¶ 71–78, Fig. 14); see also Ex. 1004 ¶ 74, Fig. 14 (Olson stating that “[c]urrent measured by current measure block 226 is used in the calculation of power in along with the voltage of batteries 160,” and Figure 14 depicting the signal from measure block 226 as an input to microprocessor 212). Dr. Woods’ testimony is, at this stage, unrebutted.” slip op. at 26

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,626,461
• Anker Innovations Ltd. v. Powermat Technologies Ltd.Instituted
  PTAB · Feb 20, 2025 · IPR2024-00995 · APJ Ken B Barrett · IPR · Institution

  The Board instituted IPR on claims 1–6, 8, and 10–13 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. The art or arguments presented in the Petition are not “substantially the same” as those previously presented to the Office when there are differences between them that are material to the Office’s prior consideration of the art and arguments. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023).” slip op. at 11

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “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.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’204 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’204 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)).” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “different from the resonant frequency of the inductive couple.” Ex. 1001, 21:16–20. The Specification then states the following: “Preferably the transmission frequency is selected to lie within one of the near-linear regions 6, 8 [of Figure 6b] where the slope of the frequency-amplitude graph is less steep.” Id. at 21:20–23; see also id. at 21:56–59 (“Referring back to FIG. 6b, the frequency of transmission is selected to be in the approximately linear region 8 of the curve between a lower frequency value of fL and an upper frequency value of fU.”9); Pet. 8 (citing the same).” slip op. at 23

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,083,204
• Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentable
  PTAB · Feb 18, 2025 · IPR2023-01210 · APJ Patrick R Scanlon · IPR · Final written decision

  Claim 18 is unpatentable as anticipated by Shkedi and Zhu; claims 1, 15, 41, and 52 were statutorily disclaimed, and the alternative obviousness grounds were not reached.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentOther

    “After institution, Patent Owner filed a Patent Owner Response (Paper 26, “PO Resp.”). Patent Owner also filed a statutory disclaimer of claims 1, 15, 41, and 52. PO Resp. 1; Ex. 2024. Accordingly, the only claim remaining for our consideration at trial is claim 18. See 35 U.S.C. § 253 (disclaimer of claims considered effective as if part of original patent); 37 C.F.R. § 42.107 (Board will not institute trial on disclaimed claims). Petitioner filed a Reply (Paper 33, “Reply”), and Patent Owner filed a Sur-reply (Paper 37, “Sur-reply”).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art for purposes of this proceeding. PO Resp. 11–12 (citing Ex. 2020 ¶¶ 47–48). For purposes of this Final Written Decision, we adopt Petitioner’s proposal as reasonable and consistent with 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 › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “Upon consideration of the parties’ arguments and for the reasons explained below, we agree with Petitioner that Patent Owner’s additional requirement of evaluating the calibration data to determine the boundaries of the area represented by a grid point should not be included in the construction of either “grid point” or “non-uniform grid point.” Instead, based on the full record, we discern no reason to alter our prior construction of “grid point” as “a point associated with representative calibration data for an area” and maintain that construction for this Final Written Decision for the following reasons. First, the construction of “grid point” we adopt here is supported by the Specification of the ’358 patent. Namely, the ’358 patent discloses that “[i]n general, a non-uniform grid point (NUG) may represent the signal characteristics and/or calibration data over a given region,” and “NUGs represent an area of collected calibration data.”9 Ex. 1001, 3:57–67. The district court identified the second quoted passage, which is identically recited in the ’104 patent (see Ex. 1018, 3:50–60) as “provid[ing] a clear indication of the meaning of ‘grid point.’” Ex. 1028, 19 (emphasis added). We agree with the district court’s analysis. Although the ’358 patent does not explain how a generic “grid point” might differ from the described “nonuniform grid point,” we do not find this distinction pertinent to construing “grid point” in this case because neither party raises this issue. Furthermore,” slip op. at 18

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We agree with Petitioner. The pertinent disclosure from Shkedi reads: Simply stated, if a mobile telephone (at a user selected location) measures a plurality of service antenna signals and stores these with their respective service antenna identifications, then that mobile telephone (or an equivalent unit) upon observing an respective signal strengths—can reasonably conclude that it is within a predetermined proximity of the original user selected location. Ex. 1006, 8:41–48. Here, we find that the language “within a predetermined proximity of the original user selected location” refers to an area around the original user selected location. In other words, “within a predetermined proximity of the original user selected location” discloses that, instead of being exactly at the original user selected location, the mobile telephone only need be in the area or vicinity of the original user selected location. Indeed, in acknowledging “that Shkedi assumes the user is within some ‘predetermined’ distance of [the original user selected] location” (PO Resp. 33), Patent Owner effectively confirms this interpretation of Shkedi’s disclosure. That is, being within some predetermined distance of the original user selected location is equivalent to being within a circle centered on the original user selected location and having a radius equal to the predetermined distance. That Shkedi allegedly only “assumes” that the user is within the predetermined distance of the original user selected location does not detract from the fact that Shkedi’s disclosure of “within a predetermined proximity of the original user selected location” describes an area around the original user selected location.” slip op. at 34

  Patent outcomesUS 8,400,358 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,400,358
• Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentable
  PTAB · Feb 18, 2025 · IPR2023-01209 · APJ Patrick R Scanlon · IPR · Final written decision

  Claim 2 is unpatentable as anticipated by Shkedi; the Board did not reach the alternative obviousness ground based on Shkedi and Spain.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentOther

    “After institution, Patent Owner filed a Patent Owner Response (Paper 27, “PO Resp.”). Patent Owner also filed a statutory disclaimer of claims 1, 3, and 11. PO Resp. 1; Ex. 2024. Accordingly, the only claim remaining for our consideration at trial is claim 2. See 35 U.S.C. § 253 (disclaimer of claims considered effective as if part of original patent); 37 C.F.R. § 42.107 (Board will not institute trial on disclaimed claims). Petitioner filed a Reply (Paper 34, “Reply”), and Patent Owner filed a Sur-reply (Paper 39, “Sur-reply”).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art for purposes of this proceeding. PO Resp. 11–12 (citing Ex. 2020 ¶¶ 47–48). For purposes of this Final Written Decision, we adopt Petitioner’s proposal as reasonable and consistent with 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 › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “contention that, because the district court referred to the data points within an area being statistically similar as the defining characteristic of a NUG region, the claimed grid points cannot exist until after the calibration data is gathered and analyzed. See PO Resp. 18–19. This contention, even if correct, is not persuasive because it is generally improper to read limitations from specific embodiments into the claims. See Cadence Pharms. Inc. v. Exela PharmSci Inc., 780 F.3d 1364, 1369 (Fed. Cir. 2015) (“[E]ven if all of the embodiments discussed in the patent included a specific limitation, it would not be proper to import from the patent’s written description limitations that are not found in the claims themselves.” (internal quotations omitted)); see also SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”). Patent Owner’s assertion that the ’379 provisional application and the ’784 patent both describe evaluating the statistical similarities of calibration data (PO Resp. 10, 20) also fails to provide a sufficient reason to import a requirement to evaluate the calibration data into the construction of “grid point” or “non-uniform grid point.” Similarly, Patent Owner’s assertion that is “of great importance” because it is fundamental to generating the grid points is unpersuasive. See PO Resp. 27. Even describing evaluation as being “of great importance” is an insufficient basis for importing a requirement for evaluation. See Texas Instruments, Inc. v. U.S. Int’l Trade Comm’n, 805 F.2d 1558, 1563 (Fed. Cir. 1986) (“[The Federal Circuit] has cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.”).” slip op. at 19

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We agree with Petitioner. The pertinent disclosure from Shkedi reads: Simply stated, if a mobile telephone (at a user selected location) measures a plurality of service antenna signals and stores these with their respective service antenna identifications, then that mobile telephone (or an equivalent unit) upon observing an identical list of service antennas with substantially identical respective signal strengths—can reasonably conclude that it is within a predetermined proximity of the original user selected location. Ex. 1006, 8:41–48. Here, we find that the language “within a predetermined proximity of the original user selected location” refers to an area around the original user selected location. In other words, “within a predetermined proximity of the original user selected location” discloses that, instead of being exactly at the original user selected location, the mobile telephone Indeed, in acknowledging “that Shkedi assumes the user is within some ‘predetermined’ distance of [the original user selected] location” (PO Resp. 33), Patent Owner effectively confirms this interpretation of Shkedi’s disclosure. That is, being within some predetermined distance of the original user selected location is equivalent to being within a circle centered on the original user selected location and having a radius equal to the predetermined distance. That Shkedi allegedly only “assumes” that the user is within the predetermined distance of the original user selected location does not detract from the fact that Shkedi’s disclosure of “within a predetermined proximity of the original user selected location” describes an area around the original user selected location.” slip op. at 34

  Patent outcomesUS 7,561,104 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,561,104
• Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentable
  PTAB · Feb 14, 2025 · IPR2023-01212 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1, 7, 9, 32, 38, and 40 are unpatentable as anticipated by Spain and obvious over Spain as evidenced by Agiwal.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “III. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have been someone knowledgeable in wireless networks, cellular radio systems, mobile communication devices and radio navigation systems. That person would have at least a bachelor’s degree in electrical engineering, with a background in radio frequency communications and/or navigation system technology as well as approximately two years of industry experience working on radio communication and/or navigation systems. Pet. 18 (citing Ex. 1008 ¶ 44). Patent Owner adopts Petitioner’s asserted level of ordinary skill in the art. PO Resp. 13. 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102, 103, effective March 16, 2013. Because the application and provisional application for the ’753 patent were filed before this date, the pre-AIA version of §§ 102, 103 apply. See Ex. 1001, codes (22), (60). Petitioner does not dispute that the filing date of the provisional application filing date applies. See Pet. 6; see generally Pet. Reply. 2 US 2003/0064735 A1, published April 3, 2003 (Ex. 1006). 3 Ankur Agiwal, LOCATOR – Location Estimation System For Wireless LANs, WMASH 2004: Proceedings of the Second ACM International Workshop on Wireless Mobile Applications and Services on WLAN Hotspots, 102–109 (2004) (Ex. 1005). For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’753 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We agree with Petitioner that Patent Owner’s additional requirements of evaluating the calibration data to determine the boundaries of the area should not be included in the construction of “grid point.” Instead, based on the full record, and for the reasons explained below, we discern no reason to alter our prior construction in the Institution Decision of “grid point” as “a point associated with representative calibration data for an area.” Dec. 22– 23.” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “The evidence supports that Petitioner has sufficiently demonstrated that Spain teaches “generating one or more sets of grid points for said calibration data,” as recited in limitation [1.2]. Spain states that: In another embodiment, the database is built by taking fingerprint measurements at predetermined locations and using intelligent algorithms that interpolate the fingerprints at all locations in between the sampled locations. Ex. 1006 ¶ 101. Relevant to this disclosure, Mr. Williams testifies that “Spain discloses generation of sets of grid points wherein each set includes newly interpolated grid points” because “the two grid points used to interpolate an additional grid point or points and the generated additional grid point or points are collectively a generated ‘set’ of grid points (i.e., a ‘set’ which includes the two calibrated grid points and the associated interpolated grid points).” Ex. 1008 ¶¶ 76–77 (citing Ex. 1006 ¶¶ 54, 55, 101). It is not disputed that Spain’s “fingerprints” are calibration data having characterizing parameters, such as observed signal strength, observed at calibration points. See Ex. 1006 ¶ 35. We find that this evidence demonstrates that Spain discloses generating one or more grid points, where the grid points are associated with calibration data.10 Accordingly, the evidence provides support that Spain’s interpolation of fingerprints at different locations discloses generation of one or more sets of grid points, where the grid points are associated with calibration data. Spain also discloses that: . . . the fingerprint corresponds not to one exact spot on the surface of the earth, but instead to a small area. The Lat and Long fields in this embodiment indicate a position inside the area, preferably the center point.” slip op. at 33

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “2. Discussion Petitioner refers to Agiwal to note that, like Spain, “Agiwal discloses an initial approximate location-based search of its database using live measurement data transmitted from a mobile device.” Pet. 18. Petitioner, however, relies only on Spain for its obviousness assertions. Id. at 22–38. The above discussion and Petitioner’s showing related to anticipation by Spain also equally apply to the obviousness showing over Spain as presented by Petitioner. See Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). Patent Owner presents no additional arguments specifically directed to Petitioner’s showing as to obviousness under Spain that we have not already addressed. See generally PO Resp. Patent Owner also presents no evidence of objective indicia of nonobviousness. See generally PO Resp. Weighing the record as a whole in view of the findings and analysis above, we conclude that Petitioner has met its burden to show, by a preponderance of the evidence, that claims 1, 7, 9, 32, 38, and 40 would have been obvious over Spain as evidenced by Agiwal.” slip op. at 43

  Patent outcomesUS 8,406,753 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,406,753

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.