• Apple Inc. v. Geoscope Technologies Pte. Ltd.All claims unpatentable
  PTAB · May 7, 2025 · IPR2024-00031 · APJ Annette R Reimers · IPR · Final written decision

  Claims 16–20, 24, 26, and 27 are unpatentable: claims 16, 19, 20, 24, and 27 are anticipated by Bhattacharya, and all challenged claims are obvious over Bhattacharya and Spain.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Patent Owner for the following reasons. First, Patent Owner’s definition is consistent with our determination in IPR2023-01210, which involved the same ’358 patent, and Petitioner does not explain sufficiently why we should adopt a different definition. See generally Pet. Reply.” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Sundaresan Declaration, Dr. Sundaresan implied agreement with the POSITA definition based on its inclusion in a signed declaration.” Pet. Reply 15. We agree with Petitioner. Although Dr. Sundaresan does not state explicitly that the proposed definition of the ordinary skill in the art is his opinion, we are persuaded that the manner in which the definition is set forth in his declaration indicates that he agrees with the definition. In this case, Patent Owner attempts to make much of Dr. Sundaresan’s statement that he had been informed of the qualifications of a person of ordinary skill in the art. See PO Resp. 42–44. Dr. Sundaresan’s testimony, however, set forth this understanding of the requisite level of skill in the art (Ex. 1003 ¶ 8). In his supplemental declaration, Dr. Sundaresan further testifies that: I agreed with this POSITA definition when preparing the Declaration, and I continue to hold the opinion that the POSITA definition is both correct and appropriate based on the disclosures of the ’358 patent and the prior art analyzed in the Declaration. Ex. 1055 ¶ 17. Dr. Sundaresan further testifies that “[i]f I did not agree with the POSITA definition, then it would not have been included [] in paragraph 8 of the Declaration.” Id. ¶ 18. Dr. Sundaresan’s inclusion of the definition of the level of ordinary skill in his original declaration indicates that he” slip op. at 13

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

    “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. The construction of “grid point” we adopt 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 district court identified the second quoted passage, which is identically recited in the ’104 patent (see Ex. 2018, 3:50–60) as “provid[ing] a clear indication of the meaning of ‘grid point.’” Ex. 2012, 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. Also, based on the claim wording “non-uniform grid point,” a “non-uniform grid point” is a type of grid point. See Pet. Reply 4 (explaining why that plain meaning supports Petitioner’s proposed construction). Furthermore, the district court construed “grid point” only, not “non-uniform grid point.” Ex. 2012, 18–20.” slip op. at 26

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

    “Based on the entire trial record, we agree with Petitioner’s analysis with supporting evidence and credit Dr. Sundaresan’s testimony supporting Petitioner’s position. See Pet. 20–37. Thus, we determine that Bhattacharya discloses the recitations of claim 15. b. Remaining Claims 16, 19, 20, 24, and 27 Claims 16, 19, 20, 24, and 27 depend from claim 15. Ex. 1001, 13:19–21, 12:30–36, 12:52–55; 12:63–67. Petitioner accounts for the limitations recited in each of claims 16, 19, 20, 24, and 27. Pet. 37–42. Patent Owner does not offer any arguments specifically addressing the limitations of claims 16, 19, 20, 24, and 27. See PO Resp. passim. Petitioner shows, by a preponderance of the evidence, that each element of claims 16, 19, 20, 24, and 27 is disclosed by Bhattacharya.” slip op. at 41

  Patent outcomesUS 8,400,358 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,400,358
• Apple Inc. v. Geoscope Technologies Pte. Ltd.All claims unpatentable
  PTAB · May 7, 2025 · IPR2024-00259 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1, 7, 9, 32, 38, and 40 are unpatentable as obvious over Bhattacharya and Yost.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In determining the level of ordinary skill in the art, various factors 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) (citation omitted). The key difference between Petitioner’s and Patent Owner’s proposed qualifications for a person of ordinary skill at the time of the invention is that Patent Owner asserts that experience in “wireless networks, cellular radio systems, mobile communication devices and radio navigation systems,” as well as a background in radio frequency communications and/or navigation system technology with two years of industry experience working in the same, would be required. PO Resp. 23. The ’753 patent is directed to locating a wireless mobile device in a geographic region. Ex. 1001, 1:15–23. Bhattacharya is directed to estimating the geographic location of a wireless terminal. Ex. 1004, code (57), ¶¶ 1, 13. Yost is directed to a method for locating the concentration of mobile radio traffic in a coverage area. Ex. 1008, code (57), 2:17–19. We find that there is support in the ’753 patent and prior art consistent with Patent Owner’s assertion that the qualifications of a person of skill would include knowledge of radio navigation and mobile communications technology. Accordingly, we adopt Patent Owner’s proposed qualifications for a person of ordinary skill.” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We do not agree with Patent Owner that Dr. Sundaresan’s declaration is substantively deficient and therefore should not be afforded weight. Patent Owner attempts to make much of Dr. Sundaresan’s statement that he had been informed of the qualifications of a person of ordinary skill in the art. See PO Resp. 47–28. Dr. Sundaresan’s testimony, however, set forth this understanding of the requisite level of skill in the art (Ex. 1003 ¶ 8). In his supplemental declaration, Dr. Sundaresan further testifies that: I agreed with this POSITA definition when preparing the Declaration, and I continue to hold the opinion that the POSITA definition is both correct and appropriate based on the disclosures of the ’753 patent and the prior art analyzed in the Declaration. Ex. 1027 ¶ 14. Dr. Sundaresan further testifies that “[i]f I did not agree with the POSITA definition, then it would not have been included [] in paragraph 8 of the Declaration.” Id. ¶ 15. Dr. Sundaresan’s inclusion of the definition of the level of ordinary skill in his original declaration indicates that he agrees with the definition, as confirmed by his cited subsequent testimony. We note that, even with Patent Owner’s arguments, the record is clear that Patent Owner was on notice of Petitioner’s proposed definition of the level of ordinary skill at the time of the Petition. Pet. 6–7.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “We agree with Petitioner that Patent Owner’s proposed additional requirements of determining the boundaries of the area from an evaluation of calibration data should not be imported into the construction of “grid point.” See Pet. Reply 1, 5. The construction of “grid point” we adopt is supported by the disclosures of the ’753 patent. Patent Owner’s support and arguments for its proposed construction rely, in large part, on specific example methods of generating non-unform grid points (NUGs). See PO Resp. 27–32. We agree with Petitioner, however, that the intrinsic record supports that the term “grid point” encompasses both uniform and non-uniform grid points. See Pet. 8–13. The ’753 patent Specification identifies “grid points” as “NUGs or UGs” and further indicates that a “NUG” is a type of a grid point. Ex. 1001, 25:31–34, 26:32–35, 13:7–8 (“a grid point, such as a NUG”). Accordingly, the claims and Specification disclose embodiments where grid points are not limited to non-uniform grid points, and they may be uniform grid points.9 Patent Owner’s proposed construction would impermissibly read out embodiments of the ’753 patent that use uniform grid points rather than non-uniform grid points.” slip op. at 23

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

    “The evidence supports that Petitioner has sufficiently demonstrated that Bhattacharya and Yost teach limitation [1b]. Bhattacharya discloses that empirical measurement of signal strengths are used to generate “expected signal-strength functions E(1,x,y,t), E(2,x,y,t), and E(3,x,y,t),” with a grid overlaid onto a geographic region where the center of each square represents a location. Ex. 1004 ¶¶ 106, 115–117; see also Pet. 35. Petitioner asserts, and we agree, that Bhattacharya discloses associating the expected signal-strength function with locations in a region, and that data is stored in the “Expected Signal-Strength Database.” Pet. 35–36 (citing Ex. 1004 ¶ 85). We also agree that this association of location (point) with calibration data (signal strength) is sufficient for the teaching of a “grid point,” which is disclosed by Bhattacharya. Pet. 35–36; Ex. 1004 ¶¶ 85, 105–117, 120, 123; Ex. 1003 ¶ 77; Pet. Reply 14–15; Ex. 1027 ¶¶ 44– 45. We also agree that Bhattacharya teaches the generation of “grid points” by, at least, populating the Expected Signal-Strength Database with locations and expected signal strength data, which includes interpolating the locations between sampled locations. Ex. 1004 ¶¶ 85, 119, 120, 123; Ex. 1003 ¶¶ 77– 78; Ex. 1027 ¶ 45; see also Pet. 35–36; Pet. Reply 15–16. Petitioner further asserts, and we agree, that Yost teaches collecting empirical measurements within the grid square surrounding the geographic point and averaging these measurements. Pet. 37 (citing Sections V.2–3; Ex. 1008, 7:28–44; Ex. 1003 ¶ 79). Further, because it is supported by the teachings of Bhattacharya and Yost, we credit Dr. Sundaresan’s testimony that a person of ordinary skill in the art would have found that Yost’s small areas of predetermined size are similar to the grids and grid points in Bhattacharya. Ex. 1003 ¶ 79; Ex. 1008, 7:50–51; Ex. 1004 ¶ 106, Fig. 6. Yost discloses that by averaging the empirical signal strengths the effects of fast fading can be removed (Ex. 1008, 7:50–56), so we also credit Dr. Sundaresan’s testimony in this regard on the advantages of averaging the multiple empirical measurements in a grid square (Ex. 1003 ¶ 80). Petitioner further asserts, and we agree, that a person of ordinary skill in the art would have found it obvious that expected signal-strength functions of {E(1,x,y,t), E(2,x,y,t), and E(3,x,y,t)} for a given grid point of Bhattacharya “may represent an average of calibration data from multiple locations within the grid square, and not simply represent the storage of the calibration data itself” in view of Yost because Petitioner’s assertion is supported by the evidence. Pet. 37–38 (citing Ex. 1008, 7:50–56; Ex. 1003 ¶ 80). Accordingly, we agree with Petitioner that the combination of Bhattacharya and Yost teaches that the average of the calibration data is “representative calibration data for an area.” See Pet. 37–38; Ex. 1003 ¶¶ 79–80; Pet. Reply 16; Ex. 1027 ¶ 46. Thus, we agree with Petitioner that the evidence of record supports that Bhattacharya and Yost teach generating sets of grid points for the calibration data, where the grid points are points associated with representative calibration data for an area.” slip op. at 40

  Patent outcomesUS 8,406,753 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,406,753
• Apple Inc. v. Geoscope Technologies Pte. Ltd.All claims unpatentable
  PTAB · May 7, 2025 · IPR2024-00032 · APJ Brian D Range · IPR · Final written decision

  Claims 2–5, 9, 11, 12, 14–16, 18–22, 27, 29, 31, and 32 are unpatentable over the asserted anticipation and obviousness grounds; claims 1, 25, and 35 were disclaimed.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The ’494 patent is directed to locating a wireless mobile device in a geographic region. Ex. 1001, 1:20–27; PO Resp. 45. Bhattacharya is directed to estimating the geographic location of a wireless terminal. Ex. 1005, code (57), ¶¶ 1, 13; PO Resp. 44–45. Spain is directed to a method for locating the concentration of mobile radio traffic in a coverage area. Ex. 1006, code (54), ¶¶ 1, 11; PO Resp. 45. We find that there is support in the ’494 patent and prior art consistent with Patent Owner’s assertion that the qualifications of a person of skill would include knowledge of radio navigation and mobile communications technology. Accordingly, we adopt Patent Owner’s proposed qualifications for a person of ordinary skill.” slip op. at 9

  • BurdenDecided for petitioner

    “Patent Owner, however, has not identified any language in the Petition that explicitly incorporates by reference Dr. Sundaresan’s testimony. See generally PO Resp.; PO Sur-Reply. Nevertheless, to the extent that the Petition purportedly incorporates by reference Dr. Sundaresan’s testimony, we do not find such incorporation sufficiently extensive to merit disregarding the testimony. Typically, an incorporation by reference is deemed improper in instances in which large portions of a declaration are incorporated—particularly where the incorporation serves to circumvent a word-count limit. See, e.g., Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 10 (PTAB Aug. 29, 2014) (informative). In this case, however, Dr. Sundaresan’s testimony describing the level of ordinary skill in the art is short. Ex. 1003 ¶ 8. The amount of testimony is not extensive and, thus, its purported incorporation into the Petition presents little or no imposition on Patent Owner or the Board.” slip op. at 12

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “In reply, Petitioner argues that “under any reasonable read of the Sundaresan Declaration, Dr. Sundaresan implied agreement with the POSITA definition based on its inclusion in a signed declaration.” Pet. Reply 15. We agree with Petitioner. Although Dr. Sundaresan does not state explicitly that the proposed definition of the ordinary skill in the art is his opinion, we are persuaded that the manner in which the definition is set forth in his declaration indicates that he agrees with the definition. Patent Owner attempts to make much of Dr. Sundaresan’s statement that he had been informed of the qualifications of a person of ordinary skill in the art. See PO Resp. 41–43. Dr. Sundaresan’s testimony, however, set forth this understanding of the requisite level of skill in the art (Ex. 1003 9 Dr. Sundaresan has a doctoral degree in electrical and computer engineering and has extensive experience in wireless communications. Ex. 1003 ¶¶ 75–78. Dr. Sundaresan also has experience with navigation and geolocation systems such as development of wireless tracking systems, as evidenced by his experience in companies such as NavigateIO Inc. Id. at ¶¶ 77–78. Patent Owner does not argue that Dr. Sundaresan fails to meet requirements for the level of qualifications of one of ordinary skill in the art under its proposed qualifications, which we adopt here. See generally PO Resp.; PO Sur-reply. Based on a review of his qualifications, we determine that Dr. Sundaresan qualifies as a person of ordinary skill at the time of the invention. ¶ 8). In his supplemental declaration, Dr. Sundaresan testifies: I agreed with this POSITA definition when preparing the Declaration, and I continue to hold the opinion that the POSITA definition is both correct and appropriate based on the disclosures of the ’358 patent and the prior art analyzed in the Declaration. Ex. 1055 ¶ 17. Dr. Sundaresan further testifies that “[i]f I did not agree with the POSITA definition, then it would not have been included [] in paragraph 8 of the Declaration.” Id. ¶ 18. Dr. Sundaresan’s inclusion of the definition of the level of ordinary skill in his original declaration indicates that he agrees with the definition, as confirmed by his cited subsequent testimony. We note that, even with Patent Owner’s arguments, the record is clear that Patent Owner was on notice of Petitioner’s proposed definition of the level of ordinary skill at the time of the Petition. Pet. 6; cf. Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1006 (Fed. Cir. 2023) (holding that Petitioner is not required to anticipate all arguments in its Petition and allowing consideration of reply where patent owner had sufficient notice of petitioner’s position and adequate opportunity to respond).” slip op. at 13

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

    “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.” slip op. at 27

  Patent outcomesUS 8,786,494 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,786,494
• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Instituted
  PTAB · Apr 21, 2025 · IPR2024-01447 · APJ Sheila F Mcshane · IPR · Institution

  The Board instituted IPR on claims 1–4, finding a reasonable likelihood that claims 1–4 are obvious over at least Bowen and Sunai.

  RulingsInstitution decision

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

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . 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) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’134 patent. Accordingly, for the reasons that follow, we institute an inter partes review of claims 1–4 of the ’134 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors 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) 5 Nagahama, EP 1391942 A1, published February 25, 2004 (Ex. 1027, “Nagahama”). (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’134 patent and the asserted prior art.” slip op. at 6

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

    “We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “combination of Bowen and Sunai teaches limitation 1[e]. Petitioner asserts, as an initial matter, that a person of ordinary skill would have been motivated to combine Bowen with Sunai because “CoFeB was known to increase TMR compared to CoFe.” Pet. 35. Dr. Bokor provides supporting testimony relying, in part, on reported research publications. Ex. 1024 ¶ 135. For instance, Dr. Bokor refers to Cardoso, which reports that the use of CoFeB-based junctures had improved TMRs compared to CoFe-based junctions. See Ex. 1061, Abstract (“CoFe-based junctions (R x A ~ 500 Ω.μm2) have lower TMR (~35%) and larger Hf (~5–6 Oe) and Hc (~12–14 Oe) [compared to CoFeB-based junctions].”). Wang also discloses that the use of CoFeB offered benefits including “a higher TMR value.” Ex. 1055, 2269–70. Additionally, Hosomi discloses that when a “ferromagnetic layer” is “comprised of a CoFeB alloy,” it “exhibits a larger TMR ratio.” Ex. 1056 ¶ 39. At this juncture, because of this evidentiary support, we find persuasive Dr. Bokor’s testimony that one of ordinary skill in the art would have been motivated to use an CoFeB alloy as disclosed in Sunai in Bowen. Patent Owner argues the motivation to combine Sunai and Bowen is flawed because Sunai, Wang, and Hosomi disclose the use of amorphous CoFeB only and not CoFeB in a crystalline form. See Prelim. Resp. 25–26, 28–29. While Sunai, Wang, and Hosomi disclose the use of amorphous CoFeB, Petitioner relies on these references to only provide support that one of ordinary skill in the art would be motivated to use a CoFeB alloy because of enhanced TMR performance due to the alloy. See Pet. 35–37; Ex. 1024 ¶¶ 135–137. We find that, on this preliminary record, the evidence provides sufficient support for Petitioner’s assertion that one of ordinary skill in the art would have been motivated to use CoFeB as taught in Sunai in Bowen because Sunai, Wang, and Hosomi, as well as Cardoso, provide support that the use of CoFeB improved electrode performance. Petitioner separately asserts that it would have been obvious to one of ordinary skill in the art to then crystallize the CoFeB electrode of the combination, which we discuss in more detail below.” slip op. at 19

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,405,134
• Jiangsu Favored Nanotechnology Co., Ltd. v. P2i Ltd.All claims unpatentable
  PTAB · Apr 11, 2025 · IPR2024-00380 · APJ Sheldon M Mcgee · IPR · Final written decision

  Claims 1–5, 7, and 9–14 are unpatentable as obvious over Cohen and Legein or Francesch and Legein; Petitioner’s motion to strike is denied as moot.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “The parties agree that a person of ordinary skill in the art in the field of the ’087 patent in June 20154 “would have had at least a bachelor’s degree in a field such as chemistry, physics, or chemical engineering, as well as at least two years of experience with plasma-polymerization techniques.” Pet. 20 (citing Ex. 1002 ¶¶ 22–29); PO Resp. 13 (Patent Owner stating that it “does not dispute this characterization of the level of ordinary skill in the art.”); see also PO Sur-reply 1–2 (noting both parties’ agreement on the education and experience level of the ordinarily skilled artisan).” slip op. at 7

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

    “On the fully developed trial record, we determine that no claims need an express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Because of Patent Owner’s shifting definitions of the education and experience level of the ordinarily skilled artisan, it is unclear on the complete record what precise definition Patent Owner and Dr. Senkevitch are applying when arguing the skilled artisan’s capabilities. PO Resp. 13, 22–27, 31–32, 34–40; PO Sur-reply 1–6, 11–13; Ex. 2007 ¶¶ 30, 31, 33, 34, 37, 40, 52–55, 60, 68, 74, 76, 77, 80–86, 89, 91, 94, 95, 100, 102–105, 108, 110, 111, 113–116, 118–120, 122, 124, 127–134. We, therefore, give Dr. Senkevitch’s testimony regarding the capabilities of a person of ordinary skill in the art minimal weight, which leaves us with Patent Owner’s insufficiently supported arguments regarding the skilled artisan’s capabilities. PO Resp. 13, 22–27, 31–32, 34–40; PO Sur-reply 1–6, 11–13. Moreover, as Petitioner correctly points out, the ʼ087 patent expressly teaches that the precise conditions for forming a protective polymeric coating “will vary depending upon factors such as, without limitation, the nature of the monomer compound, the crosslinking agent, the substrate, as well as the desired properties of the coating” and that such “conditions can be determined using routine methods.” Ex. 1001 15:1–15:5 (emphasis added); Pet. Reply 17. Where the patent itself leaves to the judgment of an ordinarily skilled artisan the assessment of these factors to ascertain suitable conditions for forming the protective coating, we find persuasive Petitioner’s view that it would have been well within the level of ordinary skill to ascertain such suitable conditions.” slip op. at 20

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “We disagree with Patent Owner. Although the claims of the ʼ087 patent recite obtaining the protective cross-linked polymeric coating “by exposing the device or component to a plasma,” the field of endeavor analysis in an analogous art inquiry does not exclusively turn on the claims at issue, but rather takes account of the entirety of a patent’s disclosure. See In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004) (explaining that “the PTO must show adequate support for its findings on the scope of the field of endeavor in the application’s written description and claims” (emphasis added)); In re Mettke, 570 F.3d 1356, 1359 (Fed. Cir. 2009) (rejecting an argument that the field of endeavor was limited to a claimed “Internet terminal” when “the specification describes various communication media, including facsimile machines and email, as related to the invention.”). This is significant here because the ʼ087 patent discloses that “[t]he … invention relates to protective coatings” and specifically “relates to protective coatings for electronic or electrical devices and components thereof, and methods of forming such coatings.” Ex. 1001, 1:14–17. Based on this disclosure, we find that the ʼ087 patent’s field of endeavor relates to “protective coatings for electronic or electrical devices and components thereof” broadly, not just those formed on such devices or components via a plasma polymerization process as asserted by Patent Owner. Id. Although Cohen does not explicitly disclose that its crosslinked polymers constitute a “protective coating,” Cohen does disclose that its “copolymerizable mixture can be cast into films” (Ex. 1004, 2:61–62), that the polymerization can “effected in situ,” and that the polymers may be used in “numerous” electrical applications (id. at 5:17–25). Tr. 8:9–10:2, 27:2– 21; see Pet. Reply 5 (explaining how “Cohen described insulating polymers that could be applied as films and be used to protect substrates including cables and electrical coils.” (citing Ex. 1004, 2:60–63, 5:13–25)). These disclosures suggest strongly that Cohen’s crosslinked polymers––if cast into a film or formed in situ on an electrical device or component––would serve as a protective coating on that electrical device or component, even though Cohen does not expressly refer to its crosslinked polymers ipsis verbis as a “protective coating.” Thus, we find that Cohen is within the field of endeavor of the ʼ087 patent.” slip op. at 15

  Patent outcomesUS 11,041,087 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,041,087
• Samsung Electronics Co., Ltd. v. Sionyx, LLCInstituted
  PTAB · Apr 10, 2025 · IPR2024-01431 · APJ Brian D Range · IPR · Institution

  The Board instituted review of claims 2–6, 28, and 33–37 based on all petition grounds, finding a reasonable likelihood that Haddad138 renders claims 2–6 and 33–37 obvious and Yap anticipates or renders claim 28 obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “arguments, and evidence presented in the parallel proceeding.” Fintiv at 12 (emphasis added). Here, due to Petitioner’s stipulation, the record does not 9 To the extent Patent Owner’s argument emphasizes that the parties have completed substantial work regarding references asserted in the petition here (PO Fintiv Surreply 1–3), this argument addresses to Fintiv factor three rather than factor four. support that the Petition’s invalidity grounds have been or will be presented to the ITC for consideration on the merits. The record also does not support that the ITC will ever adjudicate the invalidity grounds raised here10 and does not support that the ITC will ever address the dependent claims at issue here. This is, therefore, not a situation where the ITC Investigation will “resolve key issues in the petition.” Fintiv at 13. Thus, this factor weighs against discretionary denial. 7. Fintiv Factor Five: Overlapping Parties Petitioner is the same party as the respondent in the ITC investigation,” slip op. at 15

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose 1 Petitioner calls “IPR2024-01431 (‘Petition B’).” See Paper 3 (PETITIONER’S EXPLANATION OF PARALLEL PETITIONS CHALLENGING U.S. PATENT NO. 11,069,737), 1. of determining whether Petitioner meets the threshold for instituting review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely filed response may be forfeited. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 2–6, 28, and 33–37 of the ’737 patent based upon Petitioner’s asserted challenges to patentability.” slip op. at 2

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

    “Patent Owner argues11 that Petitioner “offers no motivation to modify Haddad138.” Prelim. Resp. 7–8. Patent Owner specifically argues that 11 Patent Owner also argues that Petitioner does not establish that Haddad138 anticipates claim 2. Prelim. Resp. 5–7. We do not address the anticipation challenge at this time. “Petitioner does not offer any showing on any motivation to modify Figure 9 of Haddad138 to change the configuration from a FSI to BSI architecture.” Id. at 8. On this record, Patent Owner’s argument does not undermine Petitioner’s persuasive showing. As Petitioner argues (Pet. 29), Haddad138 teaches that its “present disclosure” (which would include the Figure 9 disclosure) can be adapted for a front side illumination (FSI) or back side illumination (BSI) configuration. Ex. 1012 ¶ 48. The express teaching of Haddad138 provides motivation to modify Figure 9 of Haddad138. Patent Owner also argues that Petitioner “offers no showing that a POSITA would be able to modify the embodiment of Figure 9 to be back side illuminated with a reasonable expectation of success.” Prelim. Resp. 9. Patent Owner’s argument again does not undermine Petitioner’s persuasive showing. Petitioner cites Haddad138 expressly teaching a FSI or BSI configuration. Pet. 29 (citing Ex. 1012 ¶ 48). Haddad138’s teaching is sufficient, on this record, to establish a reasonable likelihood of Petitioner establishing a reasonable expectation of success at trial. Conclusion as to claim 2” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art (POSITA) would have had a Bachelor’s degree in engineering, physics, or a related or equivalent field, and two or more years of experience researching, developing, designing, and/or evaluating image sensors using photonics. Ex-1004 ¶50. A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard. Ex-1004 ¶50. Pet. 9. Patent Owner does not dispute the level of ordinary skill in the art at this time. For purposes of this 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 8

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,069,737
• Sterlite Technologies Inc. v. Afl Telecommunications, LLC.Institution denied
  PTAB · Apr 9, 2025 · IPR2025-00127 · APJ Josiah C Cocks · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4, 8, or 13 were unpatentable over either proposed obviousness ground.

  RulingsInstitution decision

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

    “At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 10

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art As noted above, resolving the question of obviousness requires determination of the level of ordinary skill in the art. Graham, 383 U.S. at 17–18. Here, however, as Patent Owner observes (Prelim. Resp. 10), 8 Patent Owner does not present arguments or evidence of secondary considerations in its Preliminary Response. Therefore, secondary considerations do not constitute part of our analysis herein. Petitioner has provided no assessment as to the level of ordinary skill to be considered in evaluating the grounds of obviousness that are advanced by Petitioner. The absence of such assessment calls into question the fundamental adequacy of Petitioner in carrying its burden to show a reasonable likelihood of success of unpatentability of the challenged claims that necessarily must take into account the level of ordinary skill in the art.” slip op. at 10

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

    “In any event, we do not discern that there is any apparent dispute between the parties as to the meaning of any claim term. In considering the record at hand, we determine that it is unnecessary to make explicit, or further address, any claim term in deciding whether or not to institute trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the 9 Throughout their briefings, the parties refer to the limitations designated [1.1] through [1.7] using the term “element,” e.g., “element [1.7]” (see, e.g., Pet. 23; Prelim. Resp. 23). For consistency with the parties’ chosen nomenclature, we do the same in this Decision. controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

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

    “A POSITA would have been motivated to modify Summers’ fiber optic cable 50 to include Kaji’s intermittently-fixed optical fiber tape 2A to obtain the predictable result of enabling a higher density of optical fibers to be packed in Summers’ fiber optic cable 50, as contemplated by Kaji. *** a POSITA would have had a reasonable expectation of success because such modification would amount to nothing more than a simple substitution of Summers’ four-fiber ribbons 52 with Kaji’s intermittently-fixed optical fiber tape 2A by known methods of cable manufacturing. ***” slip op. at 20

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,287,591
• Uatp IP LLC v. Slick Slide LLCInstituted
  PTAB · Apr 8, 2025 · PGR2024-00054 · APJ Julia Heaney · PGR · Institution

  The Board instituted PGR on claims 1–17 and 22–28 and all asserted grounds, finding a sufficient likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

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

    “Institution of a post-grant review is authorized by statute when “the information presented in the petition . . . 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) (2018). Upon consideration of the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated that it is more likely than not that at least one claim challenged in the Petition is unpatentable. Further, Patent Owner has not persuaded us that it is appropriate to exercise our discretion not to institute review. Accordingly, we institute a post-grant review of all claims and all grounds asserted in the Petition.1” slip op. at 2

  • Skill levelSkill level patent owner adoptedOther

    “On this record, we do not find Patent Owner’s proposed experience level of at least five years in measurement and analysis of coefficient of friction to be supported. As to the necessity of experience in textile engineering and fiber science, Patent Owner’s position, although not supported by declarant analysis of the factors listed above, is consistent with the disclosure of the ’854 patent, which describes features of a mesh layer in textile and fiber terms. See e.g., Ex. 1001, 10:17–11:14, 12:65–13:8, 14:20–24. On the whole, however, we do not discern on this record how specific experience in textile engineering and fiber science of a person of ordinary skill would materially alter the outcome at this stage of the proceeding. For purposes of this decision only, we apply Patent Owner’s proposed definition of a person of ordinary skill in the art, except for the requirement of five years of experience in measurement and analysis of coefficient of friction. The level of skill in the art remains an open issue in this proceeding. Further submissions by the parties may include argument and evidence that would assist in the resolution of this issue at the close of trial.” slip op. at 8

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

    “Petitioner contends “no formal claim construction is necessary in this proceeding.” Pet. 10; Reply 1, 4. Patent Owner contends the terms “mesh layer” and “coefficient of friction” require construction. Prelim. Resp. 14–16; Sur-reply 2–5. We have considered the parties’ arguments and discuss them below with regard to each of the terms Patent Owner contends should be construed. Because our determination that Petitioner demonstrates at least one challenged claim meets the threshold for institution (see SAS Inst., 138 S. Ct. at 1359–60) is not based on construing the term “mesh layer” or “coefficient of friction,” we determine we need not construe either claim term at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). As further discussed below, we invite the parties to address claim construction at trial.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “We agree with Petitioner that the ’854 patent specification does not include clear and explicit lexicography or a disclaimer that would support requiring “coefficient of friction” to be determined by a specific ASTM test method. The portion of the specification Patent Owner asserts as a definition of “coefficient of friction” (see Ex. 1001, 11:31–42) is a description of an embodiment; we find it does not express patentee intent to redefine the term. Further, the statement that “the coefficient of friction … may be determined using the … ASTM D1894 standard test method” (id. at 11:32–35) indicates that use of that specific test method is optional. Accordingly, in the absence of patentee lexicography or disavowal, we do not limit the scope of the term “coefficient of friction” to require that it be measured by a specific ASTM standard. Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (“Absent lexicography or disavowal, we do not depart from the plain meaning of the claims.”); In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). We note that the ’854 patent specification sets forth a definition for the coefficient of friction between the surfaces of the mesh material and the slide surface. Ex. 1001, 4:38–46. As stated above, however, we do not expressly construe any claim term at this stage of the proceeding. Should the parties address the construction of “coefficient of friction” at trial, we will make a determination after the close of evidence and any hearing.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · Graham
  Patents in suitUS 11,998,854
• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Institution denied
  PTAB · Mar 26, 2025 · IPR2024-01448 · APJ Justin T Arbes · IPR · Institution

  The Board denied institution because claims 1–8 were statutorily disclaimed, and declined to enter adverse judgment against the Patent Owner.

  RulingsInstitution decision

  • Adverse judgmentAdverse judgmentDecided for patent owner

    “reissue, or motions to amend” in the related proceedings. Prelim. Reply 1–2. According to Petitioner, we have authority to enter adverse judgment under Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1350 (Fed. Cir. 2018), where the Court held that “37 C.F.R. § 42.73(b) permits the Board to enter an adverse judgment when a patent owner cancels all claims at issue after an IPR petition has been filed, but before an institution decision.” Prelim. Reply 1. Patent Owner disputes whether we have authority to enter adverse judgment, as disclaimed claims are treated as if they never existed and the Court in Arthrex only addressed whether “the Board’s interpretation [of 37 C.F.R. § 42.73(b)] is consistent with the language of the regulation” and expressly declined to “reach the questions of whether the regulation is authorized by the statute or whether, if so, it was properly promulgated.” See Arthrex, 880 F.3d at 1350–51; Prelim. Sur-Reply 1–2. Regardless, though, Patent Owner argues that we should deny institution and not enter adverse judgment based on the Board’s precedential decision in General Electric Company v. United Technologies Corporation, IPR2017-00491, Paper 9 at 2–3 (PTAB July 6, 2017) (designated precedential on Sept. 9, 2019). Prelim. Sur-Reply 2–3.” slip op. at 3

  None
  Patents in suitUS 11,737,372
• Shenzhen Kangvape Technology Co., Ltd. v. Rai Strategic Holdings, Inc.Instituted
  PTAB · Mar 20, 2025 · IPR2024-01406 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board instituted IPR on claims 1, 3, 4, 8–13, and 15 on all asserted grounds, finding a reasonable likelihood that Takeuchi anticipates those claims.

  RulingsInstitution decision

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

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . 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 (2018); see also 37 C.F.R. § 42.4 (2023). For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’202 patent. Accordingly, we institute an inter partes review of claims 1, 3, 4, 8–13, and 15 of the ’202 patent. A. Real Parties in Interest” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “or “POSITA”) would have had “a bachelor’s degree in mechanical engineering, electrical engineering, or a related field, and three to four years of experience, or a master’s degree in mechanical engineering, electrical engineering, or a related field, and one to two years of experience.” Pet. 6 (citing Ex. 1003 ¶ 13). Petitioner further contends that “[s]uch experience would include a familiarity with thermal fluid delivery devices and/or the components and underlying technology used therein, and a higher level of 1 US 5,249,586, issued Oct. 5, 1993 (Ex. 1004, “Morgan”). 2 EP 0 845 220 B1, published Jan. 26, 1998 (Ex. 1006, “Susa”). 3 US 2005/0205084 A1, published Sept. 22, 2005 (Ex. 1007, “Gupta”). 4 US 6,155,268, issued Dec. 5, 2000 (Ex. 1009, “Takeuchi”). at 6–7 (citing Ex. 1003 ¶ 13). Patent Owner states that, for purposes of the Preliminary Response, “Patent Owner maintains that Petitioners’ arguments fail even under Petitioners’ POSA definition.” Prelim. Resp. 13. On this record, we preliminarily adopt Petitioner’s undisputed proposed definition because it appears to be consistent with the cited prior art and the disclosure of the ’202 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). B. Claim Construction” slip op. at 6

  • Prior constructionPrior construction adoptedDecided for petitioner

    “term “wicked into contact” that the Board adopted in a prior inter partes review proceeding that addressed the same term in an earlier, related patent. Pet. 7 (citing IPR2020-01602, Paper 32 at 8–15 (PTAB March 30, 2022)). ‘wicked into contact’ to mean: ‘wicked into contact (1) with the heater, or (2) with an area in close proximity to, and exposed [to] the heat produced by, the heater,’” and “[t]he present Petition adopts this formal construction for purposes of this IPR proceeding.” Id. (citing IPR2020-01602, Paper 32 at 15). Patent Owner also “adopts this construction for purposes of” the Preliminary Response, and argues that “Petitioner’s grounds fail even under its proposed construction of ‘wicked into contact.’” Prelim. Resp. 13. For purposes of this Decision, we adopt the Board’s prior construction of “wicked into contact,” namely, “wicked into contact (1) with the heater, or (2) with an area in close proximity to, and exposed to the heat produced by, the heater,” which is undisputed on this record. See Philip Morris Products, S.A. v. RAI Strategic Holdings, Inc., IPR2020-01602, Paper 32 at 8–15 (PTAB March 30, 2022). C. Asserted Anticipation by Morgan” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot reached

    “To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). “A reference may anticipate inherently if a claim limitation that is not expressly disclosed is ‘necessarily present, or inherent, in the single anticipating reference.’” In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (quoting Verizon Servs. Corp. v. Fibernet Va., Inc., 602 F.3d 1325, 1336–37 (Fed. Cir. 2010)). Based on the current record, we are not persuaded that Petitioner sufficiently establishes that Morgan discloses “a storage compartment . . . being arranged such that the liquid aerosol-forming material can be wicked into contact with the electrical resistance heater to volatilize the liquid aerosol-forming material” as recited in claim 1.” slip op. at 12

  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 11,925,202

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.