- PTAB · Dec 8, 2025 · IPR2025-01064 · APJ George R Hoskins · IPR · Institution
The Board instituted IPR of claims 1–18 on all four §103 grounds, finding a reasonable likelihood that Volkswagen would prevail on at least claim 1 over Weese.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A. Legal Standards — Petitioner’s Burden “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the 1 Amendments to 35 U.S.C. § 103 enacted by the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”) took effect in March 2013. The ’353 patent issued from an application filed in September 2004. See Ex. 1001, code (22). Thus, we apply the pre-AIA version of § 103. grounds for the challenge to each claim”)). This burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). B. Legal Standards — Obviousness A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness, if made available in the record, which has not happened here. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’353 patent “would have possessed at least a four-year degree in physics, biophysics, medical physics, or a related field, and two years of experience in developing and/or applying computed tomography methods,” wherein “[a]dditional education and professional experience are interchangeable.” Pet. 1; Ex. 1003 ¶¶ 54–55. “Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 2. For purposes of this Decision, we adopt Petitioner’s formulation of ordinary skill in the art, as it appears to be consistent with the ’353 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Expert testimonyOther
“unpatentable as having been obvious over Weese, including supporting testimony from Dr. Peterson. See Pet. 17–22, 26–83; Ex. 1003 ¶¶ 138–149, 159–257. Patent Owner opposes. See Prelim. Resp. 1–2, 6–7. We conclude Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions, as follows.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“(iii) Analysis Based on the present record, we determine Petitioner’s contentions regarding the third step of claim 1 are supported sufficiently by the cited disclosures in Weese and Dr. Peterson’s testimony to justify institution of review. In particular, Weese describes obtaining a plurality of second images of the patient’s internal organs (i.e., PET image I0 in Fig. 1, and PET image I10 in Fig. 3) using a second imaging technique (i.e., PET). See Ex. 1005, Figs. 1, 3, and 6, ¶¶ 47–49, 58–59, 72. In particular, PET image I0 in Figure 1 may be a reconstructed “volume image[]” composed of a plurality of “quasi two-dimensional” “slice images” that, when combined, represent a three-dimensional region inside the patient. Id. ¶¶ 48, 58, 61; see also Pet. 56–57. PET image I10 in Figure 3 may be a similarly reconstructed volume image composed of a plurality of slice images.4 See 4 We do not rely here on Petitioner’s alternative theory that Weese discloses a “plurality” of second images because PET images I0 and I10 are “superposed” images encompassing “several states of motion.” Pet. 58. Ex. 1005 ¶¶ 61, 83–84. Patent Owner’s sole opposition to Petitioner’s assertions in this regard are limited to whether Weese “obtain[s]” PET images I0 and I10 as recited in claim 1, which we address below. Also, it appears that PET images I0 and I10 are obtained while also obtaining second movement measurements of the patient’s internal organs using a second sensor system (i.e., motion acquisition unit 12 and motion sensor 15 / S1) which is independent from the PET imaging technique. See Ex. 1005, Figs. 1 and 6, ¶ 65 (“[T]he respiratory motion is determined during the acquisition of the PET projections P1 by means of a respiratory motion sensor provided on the patient and therefrom the frequency function f(r) or, more generally, a state of motion function F1 is derived for the construction of the motion model M2.”). Furthermore, Weese describes how frequency function f(r) is utilized to facilitate image comparison between CT and PET images at common motion states. See id. ¶¶ 31, 49–51, 70–71, 75–77, 79–80, 83; see also Ex. 1003 ¶¶ 214–216 (Dr. Peterson’s supporting testimony). Patent Owner’s sole opposition to Petitioner’s assertions in this regard are limited to whether Weese “obtain[s]” PET images I0 and I10 as recited in claim 1, which we address below. Patent Owner’s two opposing arguments are unavailing, based on the present preliminary record. First, Petitioner relies on reconstructed PET images I0 and I10 as satisfying the “plurality of second images” recited in claim 1, not PET projections P1 from which PET images I0 and I10 are derived. See, e.g., Pet. 56, 58 (“I0 and I10 disclose and render obvious a ‘plurality of second images’ in two ways” — “I0 and I10 may be ‘volume images’ formed using ‘known’ techniques,” and “I0 and I10 are ‘superposed’ PET images encompassing ‘several states of motion,’ which” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,265,353 - PTAB · Dec 3, 2025 · IPR2025-01026 · APJ Steven M Amundson · IPR · Institution
The Board instituted review of claims 1–20 on all petition challenges because the Baliarda-543 challenges met the reasonable-likelihood threshold.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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) (2024). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we 1 Petitioner filed a confidential version of the Petition as Paper 3 and a public version of the Petition as Paper 4. We cite to the public version of the Petition. institute an inter partes review of claims 1–20 in the ’677 patent on all challenges included in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill as of the ’677 patent’s effective filing date would have had “at least a bachelor’s degree in electrical engineering, computer science, or a similar degree and at least four years of experience in applied electromagnetics with an emphasis on antennas.” Pet. 11 (quoting Ex. 1018 ¶ 32). Petitioner also asserts that “[a]lternatively, the person of ordinary skill in the art would have a master’s degree in electrical engineering (or similar discipline) and at least two years of similar experience.” Id. (quoting Ex. 1018 ¶ 32). Dr. van der Weide’s testimony supports Petitioner’s assertions. See Ex. 1007 ¶ 40. For purposes of the Preliminary Response only, Patent Owner employs Petitioner’s description of an ordinarily skilled artisan. Prelim. Resp. 17. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’677 patent as well as the asserted references. See, e.g., Ex. 1001, 1:26–6:47, 42:47–44:61, code (57); infra §§ III.E.1–III.E.2.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“4. DISCUSSION “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no claim term, phrase, or limitation requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Although “Dou does not require its ‘diversity antenna architecture’ to provide spatial diversity,” Dou nevertheless requires a wireless device with some type of diversity antenna architecture. See, e.g., Ex. 1013 ¶¶ 14, 17–18, 22–24, 30, 32–34, codes (54), (57), claims 1 and 16. As an example, Dou’s independent claim 1 covering a “wireless device” requires a “first diversity antenna” and a “second diversity antenna.” Id. at claim 1. As another example, Dou’s independent claim 16 covering a “wireless device” also requires a “first diversity antenna” and a “second diversity antenna.” Id. at claim 16. As yet another example, Dou’s Abstract describes a “wireless device” including a “first diversity antenna” and a “second diversity antenna.” Id. at code (57). Petitioner does not explain how the proposed combination provides anything other than spatial diversity. See Pet. 33–35; Prelim. Reply 1–3; Ex. 1007 ¶¶ 118–124. Based on the current record, we agree with Patent Owner that with Ciais-Quadband’s antenna used for Dou’s two antennas 206 and 208, the two identical quadband antennas would have:” slip op. at 46
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,031,677 - PTAB · Dec 3, 2025 · IPR2025-01027 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR of claims 1–20 on all petition challenges, finding a reasonable likelihood that Baliarda-543 anticipates or renders obvious those claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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) (2024). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Regarding spatial diversity, Dou explains that a first internal antenna and a second internal antenna “may be separated by a distance (D) that is no less than the quarter wavelength (>=λ/4) of the lowest frequency.” Ex. 1013 ¶ 24; see Ex. 2010 ¶¶ 35, 44. Consistent with Dou’s preference for at least a quarter-wavelength spacing between antennas at the lowest frequency, “a commonly accepted rule of thumb is that at least a quarter-wavelength spacing between antennas is necessary to provide effective spatial diversity.” Ex. 2010 ¶¶ 33, 35, 47. Effective spatial diversity requires sufficient spacing between antennas because that technique “uses multiple antennas to improve signal reliability and performance by mitigating the effects of multipath fading and other interference.” Ex. 2010 ¶ 33. “Multipath fading occurs when a wireless signal propagates along multiple different paths of differing lengths because of interactions with obstacles, resulting in portions of the signal energy arriving at a receiver with different phases slightly offset in time.” Id. Locations insufficiently separated in terms of wavelength “tend to experience similar fading and interference characteristics.” Id. Thus, closely spaced antennas “cannot provide effective spatial diversity.” Id. By providing sufficient spacing between antennas, however, “the likelihood increases that at least one of the antennas will be positioned at a location where the multipath or other interference is relatively low, thereby improving overall signal quality and reliability.” Id. As Patent Owner contends, the proposed combination modifies Dou’s ground plane 310 to replicate Jing’s ground plane with dimensions of 36 mm × 60 mm and limits “the extent of Dou’s ground plane 310 so that it [does] not extend behind Jing’s antenna at 306, just like Dou does not extend it behind antenna 308.” See Pet. 35–36; Prelim. Resp. 20 (quoting Pet. 35); Prelim. Sur-reply 1; Ex. 1007 ¶ 120; Ex. 2010 ¶ 45. The lowest frequency of Jing’s antenna is 900 MHz. Ex. 1011, 2657–58; see Ex. 1007 ¶¶ 118, 154; Ex. 2010 ¶¶ 37, 44. The wavelength (λ) corresponding to a frequency of 900 MHz is 333.3 mm, and a quarter wavelength (λ/4) is 83.3 mm. Ex. 2010 ¶ 44. In the proposed combination, a distance of 60 mm separates the” slip op. at 49
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“To satisfy the written-description requirement, the inventor must have possession of the claimed invention as interpreted to encompass an allegedly infringing product. See Rivera, 857 F.3d at 1319–22; ICU Med., 558 F.3d at 1372–73, 1377–79. For purposes of the written-description requirement, the “invention” is “whatever is now claimed.” Vas-Cath, 935 F.2d at 1564 (emphasis omitted). Based on the current record, and as Petitioner asserts, LTE band 12 was not available for “use with mobile communications” or “use in any cellular communication, let alone LTE or 4G communication,” as of the ’429 application’s December 21, 2006, filing date. See Ex. 1007 ¶¶ 229, 231; Pet. 76–77. For instance, a Federal Communications Commission report adopted on July 31, 2007, notes that the 698-806 MHz spectrum “currently is occupied by television broadcasters in TV Channels 52-69.” Ex. 1045, 1, 3; see Ex. 1007 ¶ 231. The 698-806 MHz spectrum includes LTE band 12 with 698-716 MHz for uplink and 728-746 MHz for downlink. See Ex. 1026, 11 (Table 1); Ex. 1039, 498 (Table 20.1). At this stage of the proceeding, Patent Owner does not dispute that as of July 31, 2007, the 698-806 MHz spectrum was “occupied by television broadcasters in TV Channels 52-69.” See Prelim. Resp. 2–3, 23–30; Prelim. Sur-reply 5. Thus, based on the current record, Petitioner demonstrates a reasonable likelihood that as of the ’429 application’s December 21, 2006, filing date, the ’429 application did not “reasonably convey[] to those skilled in the art that the inventor had possession” of “an antenna configured to send or receive signals in the 698-806 MHz spectrum,” including LTE band 12 that Patent Owner relies on in the Geotab litigation, for “communication with any ‘4G communication standard’ because those frequencies were not usable for any mobile device communications at the time of filing.” See Pet. 78 (emphasis omitted); Ex. 1007 ¶¶ 231, 233–234, 236–237; Ex. 1045, 1, 3; Ariad, 598 F.3d at 1351. Accordingly, based on the current record, Petitioner demonstrates a” slip op. at 63
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“To satisfy the written-description requirement, the inventor must have possession of the claimed invention as interpreted to encompass an allegedly infringing product. See Rivera, 857 F.3d at 1319–22; ICU Med., 558 F.3d at 1372–73, 1377–79. For purposes of the written-description requirement, the “invention” is “whatever is now claimed.” Vas-Cath, 935 F.2d at 1564 (emphasis omitted). Based on the current record, and as Petitioner asserts, LTE band 12 was not available for “use with mobile communications” or “use in any cellular communication, let alone LTE or 4G communication,” as of the ’429 application’s December 21, 2006, filing date. See Ex. 1007 ¶¶ 229, 231; Pet. 76–77. For instance, a Federal Communications Commission report adopted on July 31, 2007, notes that the 698-806 MHz spectrum “currently is occupied by television broadcasters in TV Channels 52-69.” Ex. 1045, 1, 3; see Ex. 1007 ¶ 231. The 698-806 MHz spectrum includes LTE band 12 with 698-716 MHz for uplink and 728-746 MHz for downlink. See Ex. 1026, 11 (Table 1); Ex. 1039, 498 (Table 20.1). At this stage of the proceeding, Patent Owner does not dispute that as of July 31, 2007, the 698-806 MHz spectrum was “occupied by television broadcasters in TV Channels 52-69.” See Prelim. Resp. 2–3, 23–30; Prelim. Sur-reply 5. Thus, based on the current record, Petitioner demonstrates a reasonable likelihood that as of the ’429 application’s December 21, 2006, filing date, the ’429 application did not “reasonably convey[] to those skilled in the art that the inventor had possession” of “an antenna configured to send or receive signals in the 698-806 MHz spectrum,” including LTE band 12 that Patent Owner relies on in the Geotab litigation, for “communication with any ‘4G communication standard’ because those frequencies were not usable for any mobile device communications at the time of filing.” See Pet. 78 (emphasis omitted); Ex. 1007 ¶¶ 231, 233–234, 236–237; Ex. 1045, 1, 3; Ariad, 598 F.3d at 1351. Accordingly, based on the current record, Petitioner demonstrates a” slip op. at 63
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,349,200 - PTAB · Nov 19, 2025 · IPR2025-00842 · APJ Steven M Amundson · IPR · Institution
The Board instituted review of claims 1–10 and 12–20 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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) (2024). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–10 and 12–20 in the ’084 patent on all challenges included in the Petition.” slip op. at 2
- BurdenDecided for petitioner
“The Board’s rules require that a petition provide “a statement of the precise relief requested for each claim challenged,” including “specify[ing] where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). The Board’s rules also require that a petition include “a detailed explanation of the significance of the evidence.” 37 C.F.R. § 42.22(a)(2). Contrary to Patent Owner’s assertions, the Petition satisfies these rules. See Pet. 1, 20–119. Under the heading “Statement of Precise Relief Requested,” the Petition provides the following table:” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“earliest priority date “would have had a Bachelor’s degree in electrical or computer engineering, or a comparable field of study, plus approximately two to three years of professional experience with acoustic technology.” Pet. 5. Petitioner also asserts that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Id. at 5–6. Dr. Kyriakakis’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶¶ 34–35. For purposes of the Preliminary Response only, Patent Owner relies on the Petitioner’s description of an ordinarily skilled artisan. Prelim. Resp. 11. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’084 patent as well as the asserted references. See, e.g., Ex. 1001, 1:12–3:62, 36:49–39:8, code (57); infra §§ III.E.1–III.E.2.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“4. DISCUSSION “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no claim term, phrase, or limitation requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,197,084 - PTAB · Nov 19, 2025 · IPR2025-00843 · APJ St John Courtenay III · IPR · Institution
The Board instituted IPR on claims 1–12, 14, and 16–20 on all four grounds, finding a reasonable likelihood that claim 1 is obvious over Li and Liao.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2025). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary 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.” The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that a “person of ordinary skill in the art (“POSITA”) at the ’582 Patent’s earliest priority date (January 5, 2019), would have had a Bachelor’s degree in electrical or computer engineering, or a comparable field of study, plus approximately two to three years of professional experience with acoustic technology.” Pet. 6 (citing Ex. 1003 ¶¶ 34–36). Petitioner notes that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Id. At this stage, Patent Owner states that “[f]or the purposes of this Preliminary Response only, Patent Owner relies on the definition proposed by Petitioner because Petitioner has not shown that any challenged claims are unpatentable given this level of skill.” Prelim. Resp. 10. For purposes of this Decision on Institution, we adopt Petitioner’s definition of the level of ordinary skill in the art, because we are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’582 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect an appropriate level of ordinary skill in art).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“proposed combination of Li and Liao is based upon improper hindsight, because Patent Owner does not point to sufficient evidence of record that shows combining the teachings of the cited references in the manner proposed by the Petitioner would have been “uniquely challenging or difficult for one of ordinary skill in the art” or would have “represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Li teaches away from Petitioner’s proposed modifications to add a plug at each end of connecting component 113. See Prelim. Resp. 39, 41. A “reference does not teach away” if “it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Li expresses a general preference for connecting first housing 111 and second housing 112 to the two ends of first elastic metal wire 1131 in connecting component 113 by injection molding. Ex. 1004 ¶¶ 29, 35, dependent claims 2 and 7. For example, Li explains that “[o]ptionally, the first housing 111 and the second housing 112 are fixedly connected to both ends of the first elastic metal wire 1131 by injection molding.” Id. ¶ 29. Li does not “criticize, discredit, or otherwise discourage” using a plug to connect a housing to connecting component 113. See, e.g., id. ¶¶ 29, 35. Instead, Li discloses using plugs to mechanically connect components, i.e., to connect rear hook assembly 12 to “the first housings 111 of the two ear hook assemblies 11.” Ex. 1004 ¶ 58, Figs. 2, 9; see Ex. 1003 ¶¶ 57, 117, 122. Li similarly discloses using mechanical connectors comprising a clamping portion that engages with a locking portion to connect components, e.g., to “fix the first housing 111 and the third housing 114 together” and “fix the second housing 112 and the fourth housing 115 together.” Ex. 1004 ¶¶ 44–45. Li identifies these mechanical connectors as alternatives to adhesive bonding and “fasteners such as screws.” Id. ¶ 44; see id. ¶ 59 (identifying plugs as alternatives to “screw fixation”). Hence, we determine Li discloses a variety of ways to connect components in a bone conduction earphone but does not appear to “criticize, discredit, or otherwise discourage” any of those ways. See, e.g., Ex. 1004 ¶¶ 29, 35, 44–45, 58–59, Figs. 2, 9; see Ex. 1003 ¶¶ 57, 117, 121.” slip op. at 45
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,310,582 - PTAB · Oct 29, 2025 · IPR2025-00885 · APJ Avelyn M Ross · IPR · Institution
The Board instituted review of claims 1–11 on all petition grounds and granted ADC Solutions Auto LLC’s unopposed motion to join IPR2024-01219 in an understudy role.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We agree with the parties that the Deltran Petition involves the same patent, challenges the same claims, relies on the same expert declaration, and is based on the same grounds and combinations of prior art. Under these circumstances, our reasons for instituting review based on Deltran’s petition apply with equal force to the “substantively identical” Petition filed by ADC Solutions. Id. Accordingly, for the same reasons set forth in the Institution Decision filed in the Deltran IPR, we institute review on all claims and all grounds asserted in the Petition. See generally IPR01219, Paper 8 (Institution Decision in the Deltran IPR).” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“(1) the Motion for Joinder is timely, having been filed “no later than one month of the institution decision” in the Deltran IPR (Motion 6); (2) the Petition here “is substantially identical to the petition in the Deltran IPR” (id.; see also id. at 7 (“there are no substantive changes to the facts, citations, evidence, or arguments relied upon”); (3) “joinder should have no meaningful impact on the Deltran IPR trial schedule because the present Petition presents no new issues or grounds of unpatentability” (id. at 8); (4) “Petitioner explicitly agrees to take an ‘understudy’ role, which will simplify briefing and discovery” in the joined proceeding, “so long as the current lead petitioner in IPR2024-01219 remains an active party (id. at 9; see also id. at 4, 6);2 and (5) joinder will simplify “briefing and discovery” as all issues will be resolved “in a single proceeding” (id. at 9). Patent Owner does not contest any facts alleged by ADC Solutions in its Motion for Joinder. Having considered Petitioner’s Motion for Joinder, we determine that joinder of the instant proceeding with in the Deltran IPR is appropriate. For the reasons in our Decision Instituting Review in Deltran IPR, we find that the Petition in this proceeding also warrants institution of inter partes review and that joinder is appropriate. Accordingly, we grant Petitioner’s 2 We understand the “understudy role” as including Petitioner not making any oral argument or presentation during telephone conferences with the Board.” slip op. at 4
NonePatents in suitUS 11,667,203 - Toyota Motor Corp. v. Emerging Automotive LLCSome claims unpatentablePTAB · Oct 21, 2025 · IPR2024-00786 · APJ Frances L Ippolito · IPR · Final written decision
Claims 10, 11, 13–16 were held unpatentable: claims 10, 11, 13, 15, and 16 as anticipated by Xiao, and claim 14 as obvious over Xiao and Singh.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“arguments, we agree with Patent Owner’s proposed construction that requires the server to conduct a compatibility check. We start with the express claim language. Claim 10 recites: determining, by the server, applicable settings for the selected vehicle, the applicable settings being settings that are preferred to be set as identified from the user profile and are compatible with settings that are settable in the selected vehicle. Ex. 1001, 33:10–14 (emphases added). The express claim language requires that the server determine applicable settings. Those applicable settings, determined by the server, must also be compatible with vehicle settings. As such, the plain and ordinary meaning of the claim language expressly requires that the server make a determination of applicable settings that are defined as being compatible with vehicle settings.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’268 patent “would have had at least a Bachelor’s degree in electrical engineering, computer science, or closely related field, with at least two-to-four-years-experience in cloud services for settings customization, or a Master’s degree in electrical engineering, computer science, or equivalent.” Pet. 12 (citing Ex. 1009 ¶ 82). Patent Owner does not address the level of ordinary skill in the art. See, generally PO Resp. For purposes of this Decision, we adopt Petitioner’s proposal because it is 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 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“However, contrary to Dr. Almeroth’s testimony and Petitioner’s position, Xiao’s server already does not attempt to command vehicles to do things they cannot do. Xiao teaches that server 118 generates commands for command codes that exist and are settable in the vehicle. Ex. 1010 ¶¶ 102– 103. As such, if there is no corresponding automobile setting, then Xiao’s server would not list those command codes for retrieval and would not send a command based on that retrieved command code to control the automobile systems to achieve the operator’s desired settings because that command code is not in the database. Our understanding of Xiao is further supported by Dr. Almeroth’s testimony: By listing them in the table of automobile command code information 606, Xiao shows that there are particular settings compatible with particular automobiles and particular desired settings. Thus, Xiao demonstrates the necessarily present characteristic that certain settings (e.g., commands) are compatible with certain automobiles. Ex. 1009 ¶ 96 (emphases added). We note that Dr. Malek further explains “the nonsensical result achieved by the combination would be that Xiao’s server, at best, in response to the command request issued by the operator, could ‘look up’ a command code to apply a vehicle-specific setting to that automobile 112, only to find that there is ‘none.’” We agree with Dr. Malek that there is a “None” command code in Xiao’s database when Xiao’s database already stores settings that are known to be settable in a specific vehicle per the operator’s preferences. Ex. 2011 ¶ 135. Thus, based on the complete record, we determine that Petitioner has not demonstrated by a preponderance of the evidence that Xiao in combination with Hayashi render claim 10 obvious.” slip op. at 79
- BurdenNot shown unpatentable
“Anticipation is not an ipsissimis verbis test, but “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal, 814 F.2d at 631. Petitioner and Dr. Almeroth both acknowledge that Xiao discloses operators on the same account. Pet. 40–41; Ex. 1009 ¶ 170. But Petitioner and Dr. Almeroth do not explain sufficiently how Xiao discloses these operators have sub-user accounts. Petitioner further contends Xiao discloses plurality of accounts. Pet. Reply 18–19 (citing Ex. 1024, 33:1–44:10, 45:22–46:2); Ex. 1010 ¶ 65. Again, Petitioner has not adequately explained how the plurality of accounts includes sub-user accounts because Xiao discloses generally that multiple operators of a vehicle are on the same, single account. Ex. 1010 ¶ 66.” slip op. at 65
Patent outcomesUS 9,171,268 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,171,268 - PTAB · Oct 16, 2025 · IPR2025-00702 · APJ Ken B Barrett · IPR · Institution
The Board instituted review of claims 4, 5, 16, 17, and 19 on all asserted grounds after finding a reasonable likelihood that claim 4 was obvious over Nakamura and Benini.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a) (2023). 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 ’270 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’270 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) in 2004 would have had at least a bachelor’s degree in electrical engineering, computer science, or a similar field, with at least two years of relevant experience working with VR [virtual reality] and AR [augmented reality] systems. Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Pet. 27 (citing Welch Decl. ¶¶ 88–90, 91). Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. 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 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“(citing Phillips, 415 F.3d at 1312–17). “[W]hile extrinsic evidence can shed useful light on the relevant art, . . . it is less significant than the intrinsic record in determining the legally operative meaning of claim language.” Phillips, 415 F.3d at 1317 (internal quotation marks omitted). We construe expressly only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Petitioner contends that “[t]his Petition establishes the prior art meets each of the claim limitation[s] under any reasonable construction,” and, “[t]hus, no express construction is required.” Pet. 27–28. Patent Owner’s Preliminary Response does not contain a separate claim construction section. On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“1. Setting an origin location Limitation 4.a.1 recites, “a first manual input for setting a[n] origin location setting for a location reference for gameplay.” Ex. 1001, 24:44–46. Patent Owner argues that Petitioner has not shown that this limitation disclosed or rendered obvious by the relied-on references. See Prelim. Resp. 29. Petitioner contends that Nakamura teaches the user’s manual selection of a starting point of a game. Pet. 38–40 (citing, inter alia, Welch Decl. ¶¶ 147–148; Ex. 1007 ¶¶ 9, 35–36, Fig. 5); see also id. at 62 (for this Ground 2, referencing the contentions made for Ground 1). Petitioner further contends that “[a] POSITA would have also recognized that the initial position setting provides a location reference for gameplay.” Id. at 63. For this Ground 2, Patent Owner incorporates by reference its arguments regarding Ground 1 based on Cheok, Nakamura, and Foxlin077. See Prelim. Resp. 29. Patent Owner argues that “Nakamura’s position icon 113 [displayed at a virtual location appropriate for the initial position] represents a virtual character’s virtual location in the virtual world, rather than a user’s physical location, and has no relationship to the physical location.” Prelim. Resp. 24 (citing Ex. 1038 ¶¶ 36, 38). According to Patent Owner, “establishing a physical origin location as a location reference is critical to key features of the patented system.” Id. at 25 (citing Section III of the Preliminary Response). Patent Owner’s argument is not commensurate in scope with the language of claim 4, which recites an input for setting “a[n] origin location,” not “a physical origin location.” In support of its arguments, Patent Owner relies on the Specification, stating, for example, that “[t]he ’270 patent’s system ‘prompt[s] a user to” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,967,270 - PTAB · Oct 15, 2025 · IPR2025-00703 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1, 4, 11, 16, 30, and 102 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Cheok and Foxlin077.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“persuasive for several reasons. As an initial matter, the claim does not recite “a bounded physical play space.” Rather, the claim recites “a physical playfield.”” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) in 2004 would have had at least a bachelor’s degree in electrical engineering, computer science, or similar field, with at least two years of relevant experience working with VR [Virtual Reality] and AR [Augmented Reality] systems. Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Welch ¶95; see also ¶¶94. Pet. 17. Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. 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 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“references’ teachings. Prelim. Resp. 36–38. Patent Owner specifically argues that “[t]here is no motivation to modify Cheok’s method for allegedly determining the direction of gameplay to include a prompt requesting a manually provided direction; it already allegedly determines direction by the user’s simple movement, which the user will already do while playing the game, a much more efficient process.” Id. at 36 (citing Pet., 29–36). According to Patent Owner, “[a]dding a prompt requesting manual user input for a direction of gameplay has drawbacks to user experience; it slows down the beginning of gameplay and complicates the overall system, removing the natural feel of playing without having to set up the game, when Cheok already works for its intended purpose.” Id. at 36–37. We do not find these arguments persuasive at this stage. Even if Patent Owner is correct that the proposed combination would be less efficient or slow down the beginning of play, that there may be drawbacks from the proffered combination of teachings does not necessarily show a lack of motivation to combine teachings. Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 (Fed. Cir. 2000). And, even if the proposed combination would not have been the best choice, that does not necessarily mean that it was non-obvious. See Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (“It’s not necessary to show that a combination is ‘the best option, only that it be a suitable option.’” (quoting PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014)). Dr. Welch testifies, for example, that “[a] POSITA would have . . . recognized it would be beneficial to improve the Cheok system by implementing a similar inertial sensor initialization/reinitialization process [as in Foxlin077] to address any potential accuracy or user experience issues associated with drift.” Welch Decl. ¶ 156. Dr. Welch also testifies that, “in a virtual environment application like the Cheok system, in which a user must interact with the real environment, a POSITA would have understood that Foxlin077’s manual reinitialization process would be beneficial to address accumulated drift when an automatic drift compensator component is not sufficiently removing drift.” Id. ¶ 157. At this stage, that testimony is unrebutted with evidence, as opposed to mere attorney argument.” slip op. at 16
- 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) (2023). 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 ’821 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’821 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,033,821 - PTAB · Sep 30, 2025 · IPR2025-00618 · APJ Nabeel U Khan · IPR · Institution
The Board instituted IPR on claims 1–5, 7, 8, 12–15, 18, and 19 on both § 103 grounds, finding a reasonable likelihood that at least one claim under each ground is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 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 ’823 patent. We institute inter partes review as to all the challenged claims of the ’823 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art (POSITA) “would have had a bachelor’s degree in computer science, computer engineering, or equivalent degree, and approximately three years of experience working in the computer science or engineering field.” Pet. 12 (citing Ex. 1003 ¶ 58). Petitioner further argues that “[a]dditional experience might substitute for less education and vice versa” and that “POSITAs in June 2013 would have been knowledgeable about the design and management of networked systems and virtualization technologies, and techniques.” Id. Patent Owner “does not contest Petitioner’s proposed definition” of a POSITA at this stage of the proceeding. Prelim. Resp. 17. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill because it is consistent with the level of skill in the art at the time of the invention as reflected by the ’823 patent and the cited prior art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“given its plain and ordinary meaning in this proceeding, and that no specific claim construction of any claim term is required.” Pet. 10. Petitioner explains that the parties have proposed “different constructions for various claim terms pending in the Related Litigation” but that the Grounds “render the claims unpatentable under either party’s construction, and any reasonable construction, and thus the Board need not construe any term.” Id. at 10–11 (citing Ex. 1003 ¶ 367; Ex. 1070; Ex. 1071).2 Patent Owner does not expressly address claim construction in its Preliminary Response. We determine that, at this stage of the proceeding, no explicit constructions are required to resolve the dispute between the parties. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record. The parties are expected to assert all their claim construction arguments and evidence in the Petition, Patent Owner’s Response, Petitioner’s Reply, Patent Owner’s Sur-reply, or otherwise during trial, as permitted by our rules.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“E. Combination of Vasell, Alves, Rellermeyer, and Hall As explained above, Petitioner contends that the technical implementation details that were intended to implement Vasell’s teachings are described in Alves, Rellermeyer, and Hall. Pet. 36. Petitioner argues, therefore, that the motivation to modify Vasell to include features described in the other references is demonstrated by the references themselves. Id. at 36–37 (citing Ex. 1003 ¶¶ 375–376). For example, according to Petitioner, a POSITA would have been motivated to modify Vasell with Alves’ teaching of a centralized application repository for storing its distributed applications to provide increased scalability. Id. at 38, 39 (citing Ex. 1008, 263, 266; Ex. 1003 ¶¶ 378–379). Petitioner contends that a POSITA would have been motivated to modify Vasell with Rellermeyer’s management software to provide for load balancing, failover and elastic scalability. Id. at 38 (citing Ex. 1003 ¶ 380). Finally, Petitioner argues that a POSITA would have been motivated to modify Vasell with Hall’s management software that requires digital signatures for distributed applications to provide increased security for using third party applications. Id. at 38, 39 (citing Ex. 1003 ¶ 381). Patent Owner does not separately dispute Petitioner’s contention that a POSITA would have been motivated to combine Vasell, Alves, Rellermeyer, and Hall. to combine the prior art references and determine that Petitioner has established a reasonable likelihood that a person of ordinary skill in the art would have combined Vasell, Alves, Rellermeyer, and Hall with a reasonable expectation of success for the reasons provided by Petitioner.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,695,823
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.