- Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Harbor Island Dynamic, LLCAll claims unpatentablePTAB · Mar 16, 2026 · IPR2025-00954 · APJ Gregg I Anderson · IPR · Final written decision
Claims 3 and 8–19 are unpatentable: claim 3 is anticipated by Yu and obvious over Okashita, Okashita and Yu, and Burgener and Okashita; claims 8–19 are obvious over Burgener and Okashita, with or without Yu.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“ORDER For the foregoing reasons, ORDERED that Patent Owner’s Unopposed Motion to Amend (Paper 19) is granted, and claims 1, 2, and 4–7 are canceled;” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner proposes a slightly different level of ordinary skill, arguing that a bachelor’s degree, not a master’s degree, is all that is required because that is the “target audience for the ’886 Patent.” PO Resp. 11. Patent Owner does not otherwise dispute Petitioner’s proposed level of skill. Id. We used Petitioner’s proposed definition in the Institution Decision. Inst. Dec. 13. Neither party argues any issue as dependent on the level of ordinary skill or the differences between the proposals. Accordingly, the issues here are not dependent on the level of ordinary skill and the result is the same regardless of which definition is adopted. On this record, there is no reason to change from Petitioner’s definition used in the Institution Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“transistors” as a term that might require construction during trial. Inst. Dec. 17–18. At the hearing, the Petitioner argued that “cascaded transistors” means “[ar]ranged in a series of or in succession of stages so that each stage derives from or acts upon the product of the preceding [transistor]” and that there is no dispute that the limitation is taught by the prior art. Tr. 9:15–22. Patent Owner takes no position as to whether or not the prior art discloses “cascaded transistors.” Id. at 33:13–21 (“For the remainder of this proceeding, post institution, we have not taken any position regarding the scope of the cascaded transistors or the disclosure of the cascaded transistors in any of the prior art. We have not disputed that.”). Because Patent Owner takes no position on the issue, there is no dispute that “cascaded transistors” are shown in the prior art, construction is not necessary. Realtime, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. original)). 2. “isolated island” Patent Owner disputes Petitioner’s contention that the prior art teaches or suggests claim 3’s recitation of “said plurality of cascaded transistors is situated within an isolated island.” Pet. 35–36; PO Resp. 16–17. Although the parties dispute whether an “isolated island” is shown in the prior art, neither party proposes a construction for the term “isolated island.” We agree that the arguments presented do not require construction of “isolated island.” The issues can be determined on the plain meaning of the term in view of the arguments made. See Section II.D below.” slip op. at 8
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“We find that Petitioner has sufficiently shown Yu is analogous art to Okashita. Both references are directed to the manufacture of semiconductors, which we find to be the field of endeavor. Ex. 1004, 1:47– 58; Ex. 1005, 1:16–26. More specifically, we agree with Petitioner and find that both references are in the same field of endeavor because they relate to SOI configuration. Pet. Reply 6 (citing Pet. 7–8, 39–40; Ex. 1002 ¶¶ 77–80, 90–91). Because we find the references relied upon are in the same field of endeavor, we need not reach whether they are reasonably pertinent to the problem faced by the inventor.” slip op. at 21
Patent outcomesUS 7,745,886 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,745,886 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Harbor Island Dynamic, LLCAll claims unpatentablePTAB · Mar 16, 2026 · IPR2024-01402 · APJ Gregg I Anderson · IPR · Final written decision
The Board held claims 3 and 8–19 unpatentable: claim 3 was anticipated by Yu and obvious on the stated grounds, and claims 3 and 8–19 were obvious over Burgener and Okashita, with or without Yu.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–19 of U.S. Patent No. 7,745,886 B2 (Ex. 1001, “the ’886 patent”). Petitioner filed a Declaration of Dr. Scott E. Thompson, Ph.D., in support of the Petition. Ex. 1002 (“Thompson Dec.”). Harbor Island Dynamic, LLC (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). On April 4, 2025, we instituted this inter partes review as to the Challenged Claims and all grounds presented in the Petition. Paper 9 (“Inst. Dec.”). Following institution, Patent Owner filed a Response to the Petition (“PO Resp.”) limited to the patentability of the challenged claims. Paper 18. In support of the Patent Owner’s Response, Patent Owner filed a Declaration of John Berg. Ex. 2006. Patent Owner also filed an Unopposed Motion to Amend, cancelling claims 1, 2, and 4–7. Paper 19 (“Mot.”). We grant the motion. This proceeding is therefore limited to the patentability of claims 3 and 8–19 (“challenged claims”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner proposes a slightly different level of ordinary skill, arguing that a bachelor’s degree, not a master’s degree, is all that is required because that is the “target audience for the ’886 Patent.” PO Resp. 11. Patent Owner does not otherwise dispute Petitioner’s proposed level of skill. Id. We used Petitioner’s proposed definition in the Institution Decision. Inst. Dec. 13. Neither party argues any issue as dependent on the level of ordinary skill or the differences between the proposals. Accordingly, the issues here are not dependent on the level of ordinary skill and the result is the same regardless of which definition is adopted. On this record, there is no reason to change from Petitioner’s definition used in the Institution Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“transistors” as a term that might require construction during trial. Inst. Dec. 17–18. At the hearing, the Petitioner argued that “cascaded transistors” means “[ar]ranged in a series of or in succession of stages so that each stage derives from or acts upon the product of the preceding [transistor]” and that there is no dispute that the limitation is taught by the prior art. Tr. 9:15–22. Patent Owner takes no position as to whether or not the prior art discloses “cascaded transistors.” Id. at 33:13–21 (“For the remainder of this proceeding, post institution, we have not taken any position regarding the scope of the cascaded transistors or the disclosure of the cascaded transistors in any of the prior art. We have not disputed that.”). Because Patent Owner takes no position on the issue, there is no dispute that “cascaded transistors” are shown in the prior art, construction is not necessary. Realtime, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. original)). 2. “isolated island” Patent Owner disputes Petitioner’s contention that the prior art teaches or suggests claim 3’s recitation of “said plurality of cascaded transistors is situated within an isolated island.” Pet. 35–36; PO Resp. 16–17. Although the parties dispute whether an “isolated island” is shown in the prior art, neither party proposes a construction for the term “isolated island.” We agree that the arguments presented do not require construction of “isolated island.” The issues can be determined on the plain meaning of the term in view of the arguments made. See Section II.D below.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successAnalogous artMotivation foundUnpatentable
“We find that Petitioner has sufficiently shown Yu is analogous art to Okashita. Both references are directed to the manufacture of semiconductors, which we find to be the field of endeavor. Ex. 1004, 1:47– 58; Ex. 1005, 1:16–26. More specifically, we agree with Petitioner and find that both references are in the same field of endeavor because they relate to SOI configuration. Pet. Reply 6 (citing Pet. 7–8, 39–40; Ex. 1002 ¶¶ 77–80, 90–91). Because we find the references relied upon are in the same field of endeavor, we need not reach whether they are reasonably pertinent to the problem faced by the inventor. We also find that Petitioner has shown rational underpinnings for combining Okashita and Yu. Pet. 43–44. That the references have differences is not the test. Rather, the test is whether a person of ordinary skill in the art would have had motivation to combine them. We find there is sufficient motivation. Id. at 43 (citing Ex. 1005, 2:4–17; Ex. 1002 ¶¶ 177– 178). 3. Conclusion on Ground 3 Patent Owner does not argue any other reason that Ground 3 has not been sufficiently shown. Based on the full record, we determine that Okashita and Yu teach or suggest all the limitations of claim 3 and that one of ordinary skill in the art would have combined the references in the manner asserted with a reasonable expectation of success. We thus determine that Petitioner has established by a preponderance of the evidence that claim 3 would have been obvious over the combination of Okashita and Yu.” slip op. at 21
Patent outcomesUS 7,745,886 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,745,886 - PTAB · Sep 25, 2025 · IPR2025-00207 · APJ Gregg I Anderson · IPR · Director review
The Board instituted inter partes review of claims 1–7, 11–14, and 16–19 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsDirector review decision- Director reviewDirector review, grantedGranted
“Petitioner filed a request for Director Review of the Decision granting Patent Owner’s request for discretionary denial and denying institution (“Decision,” Paper 10) and Patent Owner filed an authorized response. See Paper 121 (“DR Request”); Paper 13 (“Patent Owner Response”). The Director granted the DR Request and referred the Petition to the Board “to handle the case in the normal course, including by issuing a decision on institution addressing the merits and other non-discretionary considerations, as appropriate.” Paper 14 (“Order Granting Director Review”).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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. See 35 U.S.C. § 314(a) (inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”) We therefore institute inter partes review as to all of the challenged claims of the ’228 patent and all of the asserted grounds of unpatentability. See SAS Inst. Inc. v Iancu, 584 U.S. 357, 364–65 (2018); 37 C.F.R. § 42.108 (a)” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“As noted above, Patent Owner did not file a Preliminary Response and thus does not respond at this time. Petitioner’s description is consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of our Decision, we adopt Petitioner’s proposal.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“a “single caching agent,” which is recited in claim 1 here. ’1344 IPR, Paper 31 (“Final Written Decision”), 16–18. We concluded that a “‘single caching agent’ means ‘one caching agent for the processor, which may be formed from distributed portions.’” Id. at 18.” slip op. at 14
Claim constructioncites KSR · NautilusPatents in suitUS 8,984,228 - PTAB · Sep 22, 2025 · IPR2025-00954 · APJ Gregg I Anderson · IPR · Institution
The Board instituted review of claims 1–19 on all petition grounds and granted NXP’s motion to join the Samsung IPR, subject to stated conditions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because Petitioner presents substantively identical challenges to claims 1–19 of the ’886 patent based on the same prior art, evidence, and unpatentability theories in the Samsung IPR, Petitioner satisfies the “reasonable likelihood” standard for instituting trial for the same reasons the “reasonable likelihood” standard for instituting trial was satisfied in the Samsung IPR. See Samsung IPR Inst. Dec. 14–27.” slip op. at 6
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“For the reasons stated by Petitioner in the Motion, and in the absence of any opposition by Patent Owner, we agree that Petitioner’s joinder to the Samsung IPR is appropriate and will not materially affect the trial schedule for the Samsung IPR. See Mot. 6.” slip op. at 8
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“2. Timeliness As discussed above, “[a]ny request for joinder must be filed . . . no later than one month after the institution date of any inter partes review for which joinder is requested.” 37 C.F.R. § 42.122(b). We instituted an inter partes review in the Samsung IPR on April 4, 2025. See Samsung IPR Inst. Dec. 1. Petitioner filed the Petition and Motion for Joinder on May 2, 2025. See P-TACTS, Filing Date Papers 1 (Pet.), 3 (Mot.). Under 37 C.F.R. § 42.122(b), Petitioner timely filed the Petition and Motion for Joinder. 3. Conclusion Whether the Petition Warrants Institution Because Petitioner (1) satisfies the “reasonable likelihood” standard for instituting trial; and (2) timely filed the Petition and the Motion for Joinder, the Petition warrants the institution of an inter partes review.” slip op. at 7
NonePatents in suitUS 7,745,886 - PTAB · Mar 13, 2025 · IPR2025-00104 · APJ Michael A Valek · IPR · Institution
The Board instituted review of claims 1, 2, 4–7, and 9–18 on all petition grounds and granted joinder to IPR2024-00770.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“1. The “Reasonable Likelihood” Standard for Instituting Trial In the 770 IPR, we determined that Petitioner TikTok Inc. (“TikTok”) satisfied the “reasonable likelihood” standard for instituting trial. See IPR2024-00770, Paper 8 (“770 IPR Inst. Dec.”) at 13–48. Here, Petitioner presents substantively identical challenges to claims 1, 2, 4–7, and 9–18 of the ’030 patent based on the same prior art, the same evidence, and the same unpatentability theories as TikTok presents in the 770 IPR. Compare Pet. 10–81, with IPR2024-00770, Paper 2 (“770 Pet.”) 11–81; see also Mot. 5 (asserting that “[t]here are no substantive differences between the LifeScan Petition and the [770] IPR Petition”). Because Petitioner presents substantively identical challenges to claims 1, 2, 4–7, and 9–18 of the ’030 patent based on the same prior art, evidence, and unpatentability theories in the 770 IPR, Petitioner satisfies the “reasonable likelihood” standard for instituting trial for the same reasons the “reasonable likelihood” standard for instituting trial was satisfied in the 770 IPR. See 770 IPR Inst. Dec. 13–48.” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“If joined to the 770 IPR, Petitioner agrees “to adhere to all applicable deadlines set forth in the [770] IPR Scheduling Order.” Id. at 7. Petitioner also stipulates that it “will act as an ‘understudy’ and will not assume an active role unless Petitioner TikTok ceases to participate in the proceeding.” Id. a 2. Petitioner agrees that the following conditions will apply “[u]nless and until Petitioner TikTok ceases to participate in the [770] IPR”: a) The Joining Petitioners shall not make any substantive filing and shall be bound by the filings of Petitioner TikTok, unless a filing concerns termination and settlement, or issues solely involving the Joining Petitioners; b) The Joining Petitioners shall not present any argument or make any presentation at oral hearing unless an issue solely involves the Joining Petitioners, or when addressing Board-approved motions that do not affect Petitioner TikTok, or its respective position; c) The Joining Petitioners shall not seek to cross-examine or defend the cross-examination of any witness, unless the topic of cross-examination concerns issues solely involving the Joining Petitioners; d) The Joining Petitioners shall not seek discovery from Patent Owner on issues not solely involving the Joining Petitioners; e) The Joining Petitioners will not rely on expert testimony beyond that submitted by Petitioner TikTok unless Petitioner TikTok is terminated from the case. Id. at 7–8. For the reasons stated by Petitioner in the Motion, and in the absence of any opposition by Patent Owner, we agree that Petitioner’s joinder to the 770 IPR is appropriate and will not materially affect the trial schedule for the 770 IPR. See Mot. 4–9.” slip op. at 11
NonePatents in suitUS 8,904,030 - PTAB · Mar 13, 2025 · IPR2025-00103 · APJ Gregg I Anderson · IPR · Institution
The Board instituted IPR on all asserted grounds for claims 1–15 and granted LifeScan, Senseonics, and Ascensia’s motion to join the TikTok IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Here, Petitioner presents substantively identical challenges to claims 1–15 of the ’766 patent based on the same prior art, the same evidence, and the same unpatentability theories as TikTok presents in the 769 IPR. Compare Pet. 15–111, with IPR2024-00769, Paper 2 (“769 Pet.”) 15–118; see also Mot. 5 (asserting that “[t]here are no substantive differences between the LifeScan Petition and the [779] IPR Petition”). Because Petitioner presents substantively identical challenges to claims 1–15 of the ’766 patent based on the same prior art, evidence, and unpatentability theories in the 769 IPR, Petitioner satisfies the “reasonable likelihood” standard for instituting trial for the same reasons the “reasonable likelihood” standard for instituting trial was satisfied in the 769 IPR. See 769 IPR Inst. Dec. 15–55.” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Here, Petitioner asserts that joinder is appropriate because the Petition “challenges the validity of the same claims of the ’766 patent on identical grounds to those in the [769] IPR,” and “[t]here are no substantive differences between the LifeScan Petition and the [769] IPR Petition.” Mot. 5. Petitioner’s “supporting materials―including its supporting expert declaration, exhibits, and exhibit numbering―are substantively identical to those presented in the [769] IPR.” Id. at 6. As such, Petitioner argues that a joined proceeding would “will not raise any new issues of unpatentability and will not impose any additional burden on the Board or Patent Owner, or add additional complexity to the case.be more efficient and less wasteful, as only a single trial on these common grounds would be required.” Id. If joined to the 769 IPR, Petitioner agrees “to adhere to all applicable deadlines set forth in the [769] IPR Scheduling Order.” Id. at 7. Petitioner also stipulates that it “will act as an ‘understudy’ and will not assume an active role unless Petitioner TikTok ceases to participate in the proceeding.” Id. a 2. Petitioner agrees that the following conditions will apply “[u]nless and until Petitioner TikTok ceases to participate in the [769] IPR”:” slip op. at 12
NonePatents in suitUS 9,900,766 - PTAB · Mar 13, 2025 · IPR2025-00102 · APJ Cynthia M Hardman · IPR · Institution
The Board instituted IPR on all asserted grounds against claims 1–10 and granted LifeScan, Senseonics, and Ascensia’s motion to join the TikTok IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because Petitioner presents substantively identical challenges to claims 1–10 of the ’121 patent based on the same prior art, evidence, and unpatentability theories as TikTok presents in the TikTok IPR, Petitioner satisfies the “reasonable likelihood” standard for instituting trial for the same reasons TikTok satisfied the “reasonable likelihood” standard for instituting trial. See TikTok Inst. Dec. 16–55.” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“challenges the validity of the same claims of the ’121 patent on identical grounds to those in the TikTok IPR,” and “[t]here are no substantive differences between the LifeScan Petition and the TikTok IPR Petition.” Mot. 5. Petitioner’s “supporting materials―including its supporting expert declaration, exhibits, and exhibit numbering―are substantively identical to those presented in the TikTok IPR.” Id. at 6. As such, Petitioner argues that a joined proceeding would “be more efficient and less wasteful, as only a single trial on these common grounds would be required.” Id. at 5. If joined to the TikTok IPR, Petitioner agrees “to adhere to all applicable deadlines set forth in the TikTok IPR Scheduling Order.” Id. at 7. Petitioner also agrees it “will act as an ‘understudy’ and will not assume an active role unless Petitioner TikTok ceases to participate in the proceeding.” Id. at 2. Petitioner agrees that the following conditions will apply “as long as Petitioner TikTok remains a party to the TikTok IPR”: (1) The Joining Petitioners shall not make any substantive filing and shall be bound by the filings of Petitioner TikTok, unless a filing concerns termination and settlement, or issues solely involving the Joining Petitioners; (2) The Joining Petitioners shall not present any argument or make any presentation at oral hearing unless an issue solely involves the Joining Petitioners, or when addressing Board-approved motions that do not affect Petitioner TikTok, or its respective position; slip op. at 12
NonePatents in suitUS 11,234,121 - Mercedes-Benz USA, LLC v. Daedalus Prime LLCNo claims unpatentablePTAB · Jan 8, 2025 · IPR2023-01343 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–7, 13–15, 17, and 18 were not shown unpatentable because Bose and White, alone or in the asserted combinations, failed to teach claimed workload comparisons or workload monitoring.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“We are persuaded and find for the reasons given that Petitioner fails to prove by a preponderance of the evidence that White teaches or suggests “receiving a bus workload for a communication bus and a first processing element workload for a first processing element based on an integrated circuit reaching a limit.” Patent Owner’s expert Dr. Brogioli testifies that “[t]he workload is a function of the demands imposed by, e.g., applications running on the system, and may or may not be subject to direct control, whereas the conditions under which that workload is processed are controlled directly.” Brogioli Decl. ¶ 66. We agree with Dr. Brogioli and find that White’s frequency and voltage monitoring and adjustments do not result in the power management logic receiving the bus workload as recited in claim element 4[a]. Id. ¶¶ 64–66. We find the testimony of Mr. Wyatt on this issue unconvincing. Wyatt Decl. ¶ 103. In support of his opinion that “monitoring the operating voltages and frequencies of the logic core 120A and common logic bridge 110 is monitoring the workload of those components,” he states: “It was well understood that operating frequency and voltage of a component reflect the activity and use, or workload, of that component.” Id. However, he does not provide any evidentiary support for this statement. We, therefore, give it little weight. See PTAB Consolidated Trial Practice Guide 40 (Nov. 2019)5 (“Opinions expressed without disclosing the underlying facts or data may be given little or no weight.”) (citing Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)).” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“response. Paper 9. At the institution stage, therefore, Patent Owner did not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regarded Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our Institution Decision, we adopted Petitioner’s proposal. Institution Dec. 12–13. In its Response, Patent Owner states that it “uses this definition” in its analysis. PO Resp. 15 (citing Brogioli Decl. ¶ 25). In view of the foregoing, for this Decision, we adopt the description of the person of ordinary skill articulated by Petitioner and used in our Institution Decision. In light of our review of the complete record, we find that this formulation is consistent with the ’494 patent and the prior art of record, and is supported by the testimony of Mr. Wyatt. See Wyatt Decl. ¶ 21.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionGranted
“Post-institution, Patent Owner proposes a construction for the term “workload.” PO Resp. 15–16. Patent Owner contends that “[a] person of ordinary skill in the art would understand that in the ’494 patent, the term ‘workload’ means ‘an amount of activity over a quantum or period of time.’” Id. at 15. Dr. Brogioli’s testimony supports this construction, as does Mr. Wyatt’s. Brogioli Decl. ¶¶ 36–38; Wyatt Dep. 34:14–36:9. The ’494 patent also supports this construction. Ex. 1001, 8:20–22, 9:60–63. Petitioner does not dispute this proposed construction in its Reply. For the reasons given, we adopt Patent Owner’s construction for “workload.”” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Nowhere does Petitioner or its expert point to an explicit disclosure in Bose of making a comparison of the claimed “bus workload and a bus workload threshold.” Instead, Petitioner relies on its expert’s opinion as to what a person of ordinary skill might have known, without any additional supporting evidence. See, e.g., Pet. 26 (“[A person of ordinary skill] would have understood global PMCU compares a workload threshold as exemplified by the predicted power and performance of each power mode and the monitored workload to select and adjust the power mode of a component” (citing Wyatt Decl. ¶¶ 54–55)). This opinion is not supported by the record. The only disclosure of a comparison in Bose that we have been shown is the comparison of PowerTotal to PowerMax in step 303 of Figure 3, which Petitioner does not rely on to meet the “comparison” limitation in the claim. Hearing Tr. 17:16–20. Also without proper support is Petitioner’s assertion that “a [person of ordinary skill] would have understood that in Bose, selecting or adjusting power mode for a component entails comparing a workload threshold, such as predicted power and performance associated with each power mode with real time statistics, such as the monitored workload of a component.” Pet. 26 (citing Wyatt Decl. ¶¶ 55–56). We determine that for the reasons given, Petitioner fails to demonstrate by a preponderance of the evidence that the claimed comparison element 1[g] of claim 1 is taught or suggested by Bose. We find, therefore, that Petitioner has not demonstrated that claim 1 is anticipated by Bose, nor has Petitioner demonstrated that to a person of ordinary skill, claim 1 would have been obvious in light of Bose.” slip op. at 25
Patent outcomesUS 8,898,494 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,898,494 - Mercedes-Benz USA, LLC v. Daedalus Prime LLCAll claims unpatentablePTAB · Jan 8, 2025 · IPR2023-01333 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–24 are unpatentable as obvious over Sutardja, Sutardja and Rychlik, or Sutardja and Carmack; the Board did not reach the Mathieson-based grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We regarded Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our Institution Decision, we adopted Petitioner’s proposal. Institution Dec. 14–15.” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We decline to “throw out” Dr. Horst’s testimony for several reasons. First and foremost, Patent Owner has not moved or otherwise sought to exclude his testimony, or even filed an objection. Hearing Tr. 46:19–47:1. Thus, the issue of whether the testimony should be excluded is not properly before us. Further, Petitioner asserts that “[t]his distinction is irrelevant.” Pet. Reply 2. We agree. Patent Owner has not pointed to any opinion by Dr. Horst that turns on the alleged “flaw” in the definition of the person of ordinary skill. Id. at 46:19–48:3. Finally, there is no prejudice. Patent Owner’s expert used the definition proposed by Patent Owner in his analysis. See Brogioli Decl. ¶ 25. Nor could Patent Owner show us with specificity any place in the record where resolving this dispute would make a difference in this case. Hearing Tr. 46:3–47:3. For the reasons given, we do not see the need to modify our definition of a person of ordinary skill or to exclude or give little weight to Dr. Horst’s opinions.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionGranted
“operating system.” PO Resp. 12–13. Relying on the Microsoft Computer Dictionary, Patent Owner contends that “[a]n ‘operating system’ is, and would be understood by a person of ordinary skill in the art to be, ‘The software that controls the allocation and usage of hardware resources such as memory, central processing unit (CPU) time, disk space, and peripheral devices.’” PO Resp. 13 (citing Ex. 2007, 378). Dr. Brogioli’s testimony generally supports this construction, as does Dr. Horst’s. See Brogioli Dep. 8:17–22; Horst Dep. 32:3–8. Petitioner responds that the term “should be understood in accordance with its plain meaning,” and therefore does not require construction, but does not dispute Patent Owner’s proposed construction. Pet. Reply 2. For the reasons given, we adopt Patent Owner’s construction for “operating system.” However, we do not see this construction as dispositive of the central issue of whether the operating system in Sutardja controls the transition of the cores. See Section II.D.1, infra. slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“PMS module do not ‘control’ the core switching module or the hardware on which it runs. Instead, the kernel and the PMS module only make system calls to the core switching module.” PO Resp. 27. We disagree that this is not sufficient control to meet this claim limitation. As Dr. Horst’s testimony (quoted supra) explains, the PMS module and kernel modules “trigger a transition” by generating a call to the hypervisor module or a core switching module. Horst Decl. ¶ 124. Patent Owner’s argument fails because it assumes the claims require direct control, when the claims recite no such restriction (nor have we been asked by either party to construe the claims as such).” slip op. at 28
Patent outcomesUS 10,049,080 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,049,080 - Ao Kaspersky Lab v. Open Text Inc.InstitutedPTAB · Dec 21, 2023 · IPR2023-01334 · APJ Michelle N Wormmeester · IPR · Institution
Instituted review of claims 1–30 as obvious over Kester and Honig, with Kennedy for claims 3–6 and 15–18, and granted joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review of the challenged claims and grant the Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“petition is time-barred.” Prelim. Resp. 2. Patent Owner asserts that “by the time the Board issues its institution decision in the instant proceeding, the [289] IPR will likely be terminated,” as Patent Owner and the petitioner in the 289 IPR “have already resolved their disputes with respect to the ’250 patent and jointly filed a motion to terminate the [289] IPR.” Id. at 3. Patent Owner’s argument is unavailing. The 289 IPR was instituted on July 21, 2023, and Petitioner filed its joinder motion on August 18, 2023, before the joint motion to terminate in the 289 IPR was filed on November 20, 2023. The joinder motion is timely because joinder was requested no later than one month after institution of the 289 IPR. See 37 C.F.R. § 42.122(b). Additionally, the 289 IPR is still pending. The Petition therefore is not time-barred. Under these circumstances, we may grant Petitioner’s joinder motion.” slip op. at 4
- PTAB / AIA Trials › Real party in interest / privityDecided for petitioner
“This argument also is unavailing. Since the filing of Patent Owner’s Preliminary Response in this proceeding, Petitioner has updated its mandatory notices to include Kaspersky Labs Limited and Kaspersky Lab Switzerland GmbH as real parties in interest “out of an abundance of caution.”5 Paper 8, 5. Moreover, we need not decide whether a party has identified all real parties in interest at the institution stage absent an implication of a time bar or an estoppel under 35 U.S.C. § 315. SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 at 18–20 (PTAB Oct. 6, 2020) (precedential). We recognize Patent Owner’s allegation that, “without joinder, the [P]etition is time-barred.” Prelim. Resp. 2 (emphasis added). As explained above, however, the Petition is not time-barred, given that Petitioner has timely filed its joinder motion and the 289 IPR is still pending. Patent Owner does not allege a time bar or other estoppel would prevent institution if an unnamed party were identified as a real party in interest.” slip op. at 4
- Other 314aDecided for petitioner
“Patent Owner further argues that we should discretionarily deny the Petition under 35 U.S.C. § 314(a) for the “same reasons” set forth in its preliminary response in the 289 IPR. We have already found those reasons insufficient to support exercising our discretion to deny institution. Thus, for the reasons given in our institution decision in the 289 IPR, we decline to exercise our discretion to deny institution here. See 289 IPR, Paper 7.” slip op. at 5
Discretionary denialPatents in suitUS 8,418,250
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.