- Meta Platforms, Inc. v. Sitnet LLCAdverse judgmentPTAB · Jul 15, 2026 · IPR2026-00100 · APJ Thu A Dang · IPR · Adverse judgment
The Board granted adverse judgment against SitNet after its disclaimer left no challenged claims remaining in the instituted trial.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“judgment include: . . . [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). “The application of the [adverse judgment] rule on its face does not turn on the patentee’s characterization of its own request.” Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1349 (Fed. Cir. 2018). In this case, Patent Owner’s disclaimer of all claims of the ’290 patent leaves no claims remaining in the trial. Although Patent Owner argues that “it was filed to conserve the limited resources of the Board and the Parties in light of the fact that the ’290 Patent is no longer involved in any copending litigation” (Ex. 3001), we deem such argument not a persuasive reason as to why we should not apply § 42.73(b)(2), or why termination is more appropriate. Pursuant to 37 C.F.R. § 42.73(b)(2), we construe Patent Owner’s disclaimer of all claims at trial as a request for adverse judgment, which we grant.” slip op. at 3
NonePatents in suitUS 10,117,290 - Boe Technology Group Co., Ltd. v. Optronic Sciences LLCAdverse judgmentPTAB · Jan 12, 2026 · IPR2024-01134 · APJ Thu A Dang · IPR · Adverse judgment
The Board denied Patent Owner’s termination request and granted adverse judgment after it disclaimed the entire patent, leaving no claims in the trial.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. “Actions construed to be a request for adverse judgment include: . . . [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). “The application of the [adverse judgment] rule on its face does not turn on the patentee’s characterization of its own request.” Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1349 (Fed. Cir. 2018). In this case, Patent Owner’s disclaimer of the entire term of the ’733 patent leaves no claims remaining in the trial. Although Patent Owner argues that entry of adverse judgment “has negative effects that would discourage Patent Owner from making efforts to streamline the issues” (PO Sur-reply 1–2), we deem such argument not a persuasive reason as to why we should not apply § 42.73(b)(2), or why termination is more appropriate. Therefore, pursuant to 37 C.F.R. § 42.73(b)(2), we construe Patent Owner’s disclaimer as a request for adverse judgment, which we grant.” slip op. at 3
NonePatents in suitUS 9,406,733 - Boe Technology Group Co., Ltd. v. Optronic Sciences LLCAdverse judgmentPTAB · Jan 12, 2026 · IPR2024-01315 · APJ Kevin W Cherry · IPR · Adverse judgment
The Board denied Patent Owner’s termination request and entered adverse judgment after Patent Owner disclaimed all challenged claims, leaving no claims in the trial.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. “Actions construed to be a request for adverse judgment include: . . . [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). “The application of the [adverse judgment] rule on its face does not turn on the patentee’s characterization of its own request.” Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1349 (Fed. Cir. 2018). In this case, Patent Owner’s disclaimer of claims 1 and 3 of the ’477 patent leaves no claims remaining in the trial. Although Patent Owner argues that entry of adverse judgment “has negative effects that would discourage Patent Owner from making efforts to streamline the issues” (PO Sur-reply 1–2), we deem such argument not a persuasive reason as to why we should not apply § 42.73(b)(2), or why termination is more appropriate. Therefore, pursuant to 37 C.F.R. § 42.73(b)(2), we construe Patent Owner’s disclaimer as a request for adverse judgment, which we grant.” slip op. at 3
NonePatents in suitUS 8,158,477 - PTAB · Dec 9, 2025 · IPR2025-00756 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1, 2, 5–8, 11, and 12 on three §103 grounds, finding a reasonable likelihood of unpatentability over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted as to claims 1, 2, 5–8, 11, and 12 of the ’803 patent to determine whether: 1) claims 1, 5–7, 11, and 12 are unpatentable under 35 U.S.C. § 103 as obvious over TS 36.300, TS 36.321, and TS 36.331; 2) claims 1, 2, 5–8, 11, and 12 are unpatentable under 35 U.S.C. § 103 as obvious over Ericsson and TS 25.331; and 3) claims 5, 6, 11, and 12 are unpatentable under 35 U.S.C. § 103 as obvious over Ericsson, TS 25.331, and Sebire; and” slip op. at 27
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“ordinary meaning, “primary” and “non-primary” cells are all cells that the WTRU is connected to (PO Resp. 16), the plain language in claim 1, and similarly in claim 7, does not require a “primary” node or “non-primary” cell to have a connection to the WTRU. See Ex. 1001, 10:38−56; 11:11–26. We find unavailing Patent Owner’s contention that the claims require that the WTRU “be connected to more than one cell,” wherein cells that are “associated with a wireless network node,” but are not connected to the WTRU “at the same time” cannot be “primary” or “non-primary” cells. PO Resp. 16. In the ’803 patent, nothing in the Specification clearly limits “primary” and “non-primary” cells as Patent Owner proposes. Prelim. Resp. 16. Patent Owner points to the Specification of the ’803 patent to show that, for softer handover, the WTRU is connected “with more than one cell [] which are controlled by the same Node-B,” and “[o]ne of the[se] cells 808 may be designated as a primary cell 808a, while other cells are designated as a non-primary cells 808b.” Id. (alterations in original) (citing Ex. 1001, 8:44–46, 9:4–6, Figs. 8A–B). However, this portion of the Specification (describing a softer handover embodiment in which a cell “may be designated” as a primary while other as non-primary) does not provide a clear definition to warrant interpreting the “primary” and “non-primary” cells as requiring “connection” to the WTRU “at the same time.” Id. That is, nothing in the Specification clearly precludes “primary” and “non-primary” cells from being “source” and “target” cell, as Patent Owner contends. PO Resp. 16. and the Specification, we determine that the terms “primary” and “non-primary” recited in claims 1 and 7 are not limited to cells connected to a WRTU at the same time. We determine no further explicit construction of this term is necessary to resolve the controversy. See Vivid Techs., 200 F.3d at 803.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“f) Motivation to combine Ericsson and TS 25.331 Petitioner contends that a “POSITA would have been motivated to combine Ericsson and TS 25.331 because they are directed to similar technologies and a skilled artisan would have understood the benefits of combining these two references,” and “would have understood that there was a high likelihood of success in making the combination.” Pet. 34 (citing Ex. 1003 ¶¶ 156–157). In particular, the references “are both reasonably pertinent to the problem faced by the inventor, namely protocols for handover in a telecommunications system.” Id. (citing Ex. 1003 ¶ 158). According to Petitioner, the combination “involves the predictable use of interchangeable prior art elements according to their established functions” more than routine engineering.” Id. at 37 (citing Ex. 1003 ¶ 174). At this stage of the proceeding, Patent Owner does not present arguments in the Preliminary Response addressing the specific merits of Petitioner’s contentions with respect to the motivation to combine Ericsson and TS 25.331. See generally Prelim. Resp. 15–18. We find availing Petitioner’s contention that Ericsson and TS25.331 are “directed to similar technologies,” and that a “skilled artisan would have understood the benefits of combining these two references.” Pet. 34. On this preliminary record, we are persuaded that Petitioner has made a sufficient showing that a POSITA would have had a reason to combine the teachings of Ericsson and TS 25.331.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, relying on the testimony of Dr. Kakaes, contends that a person of ordinary skill in the art (POSITA) “would have had a B.S. in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems,” and “would also have familiarity with the wireless standards and well-known protocols for accessing wireless networks existing at the relevant time,” wherein “[m]ore education may supplement practical experience or vice versa.” Pet. 12–13. At this stage in the proceeding, Patent Owner does not contest Petitioner’s proposal or offer an alternative. On this record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,764,803 - PTAB · Dec 4, 2025 · IPR2025-01103 · APJ Brian P Murphy · IPR · Institution
The Board instituted IPR on claims 7–12 on all grounds, finding a reasonable likelihood that Lamkin and the asserted combinations render the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have jurisdiction under 35 U.S.C. § 314, which provides that 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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). If the Board institutes a review, it unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we conclude the Petition demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim in the ’101 patent. Accordingly, we institute an inter partes review of claims 7–12 of the ’101 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”), 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) (citing Custom Accessories, Inc. v. Jeffrey- not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. For purposes of this Decision, we adopt the Petition’s formulation of the level of ordinary skill in the art, which is consistent with the description in the ’101 patent, the prior art of record, and the testimony of Dr. Zadok.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“Petitioner contends that no claim terms need construction, but also contends that “claim interpretations on which this Petition depends are incorporated in and apparent from the prior art mapping analysis below.” Pet. 5. Patent Owner contends that Petitioner’s position contradicts the position Petitioner took in related district court litigation, particularly Petitioner’s district court constructions of means-plus-function limitations” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Fiechter (Ground 1B) in the manner claimed in the ’101 patent with a reasonable expectation of success, which we find sufficient to satisfy the reasonable likelihood standard on the present record. Pet. 42–45 (citing Ex. 1003 ¶¶ 360–362, 372–382). The Petition also offers several motivations to combine Lamkin and Ito (Ground 1C) in the manner claimed in the ’101 patent with a reasonable expectation of success, which we also find sufficient on the present record. Pet. 49–52 (citing Ex. 1003 ¶¶ 383–401). The Preliminary Response does not challenge the Petition’s asserted motivations to combine Lamkin-Fiechter or Lamkin-Ito. Prelim. Resp. generally. On the present record at this stage of the proceeding, we determine the Petition sufficiently supports a motivation to combine Lamkin-Fiechter and Lamkin-Ito with a reasonable expectation of success for the reasons articulated in the Petition and Dr. Zadok’s cited declaration paragraphs.” slip op. at 21
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,230,101 - PTAB · Nov 12, 2025 · IPR2025-00959 · APJ Lisa A Murray · IPR · Institution
The Board instituted IPR on claims 1, 5-9, 13-17, and 25-27 across all petitioned grounds, finding a reasonable likelihood of obviousness.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [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.” 35 U.S.C. § 314(a). For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on all grounds raised in the Petition. B. Real Parties in Interest” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that one of ordinary skill in the field of the ’016 Patent would have had: a degree in computer science or computer engineering, along with 2 years of professional experience working with telecommunications systems, or an equivalent level of skill, knowledge, and experience. . . . This POSITA would have been aware of and generally knowledgeable about the standard features and functionality of emergency calling, geolocation, and text messaging systems. Pet. 15. For the purposes of its Preliminary Response, Patent Owner “does not challenge that definition.” Prelim. Resp. 5. We find Petitioner’s formulation to be consistent with the evidence of record at this stage of the proceedings, including the asserted prior art and the ’016 Patent, and we adopt and apply that definition for purposes of this Decision. C. Claim Construction” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“During the reissue proceedings that led to the ’016 Patent, Patent Owner represented that “the ’016 patent claim limitations requiring a ‘call reception module,’ ‘presentation module,’ ‘outgoing message module,’ and ‘transmission module’ are not means-plus-function limitations and instead require only “computer program modules that are executed by processors, rather than a generic description for software or hardware.” Ex. 1003, 156– 169; see Pet. 14. For the purposes of these proceedings only, Petitioner accepts these representations and asserts that “[n]o terms require further construction and all terms can be afforded their plain and ordinary meaning.” Id. at 14–15. For the purposes of its Preliminary Response, Patent Owner agrees with Petitioner. Prelim. Resp. 5. After reviewing the parties’ arguments and evidence, we determine that no express constructions of any terms are needed for us to render our Decision on Institution. See, e.g., 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 foundReasonable expectation foundDecided for petitioner
“To establish a motivation to combine multiple prior art references, it is not necessary to identify some deficiency in the primary reference that can only be remedied by combining that reference with another. The proposed the primary reference. See, e.g., Honeywell Int’l Inc. v. 3G Licensing, S.A., 124 F.4th 1345, 1355–56 (Fed. Cir. 2025) (Obviousness “does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention.”); see also KSR, 550 U.S. at 420 (“[T]he problem motivating the patentee may be only one of many addressed by the patent’s subject matter.”). The relevant question is not whether the proposed combination is the most desirable combination available. Rather, it is “whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of the claimed invention.” Honeywell, 124 F.4th at 1355 (citations omitted). Here, Petitioner has identified reasons why it would have been desirable to modify the system of Brooks to include the texted URL link of SARLOC: the caller would not need any special technical skills or equipment; existing smartphone functionality would be capable of collecting the location information; and SARLOC simply represents a specific example of a general concept taught in Brooks, that of exchanging location information through text messages. Pet. at 38–39. Because the claimed modification need only be a suitable option, rather than the “best” or “preferred” approach, Patent Owner’s argument is unpersuasive.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · Graham - Apple Inc. v. Proxense, LLCAll claims unpatentablePTAB · Nov 12, 2025 · IPR2024-01399 · APJ Thu A Dang · IPR · Final written decision
Claims 1–6, 8–15, and 17–20 are unpatentable under § 103, based on Buer alone or in the combinations listed.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“1 Apple Inc. filed a motion for joinder and a petition in IPR2024-01399, which were granted, and, therefore, Apple Inc. has been joined as petitioner in this proceeding. We also granted a Joint Motion to Terminate Inter Partes Review Proceeding as to the other petitioner, leaving Apple Inc. as the sole petitioner.” slip op. at 1
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“Here, as Petitioner points out, “[n]one of the elements of the Challenged Claims . . . use the word ‘means,’” similar to the challenged claims in the previous related proceedings. Pet. Reply 2–3; see also IPR2024-00405, Ex. 1001, 22:43–60; IPR2024-00407, Ex. 1001, 22:36–49; IPR2024-00573, Ex. 1001, 21:51–65. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112 ¶ 6. See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112 ¶ 6 is not overcome.” slip op. at 17
- Prior constructionPrior construction adoptedDecided for patent owner
“invoke 35 U.S.C. § 112 ¶ 6. See PO Resp. 4; Pet. Reply 2; PO Sur-reply 8. However, we addressed similar arguments with respect to this issue in previous related proceedings. See IPR2024-00405, Paper 24 at 8–25; IPR2024-00407, Paper 25 at 8–26; IPR2024-00573, Paper 27 at 8–29. In fact, during Oral Argument in this proceeding, Patent Owner acknowledged that “this panel construed the claims at issue in [previous proceedings,] IPR2024-573 and 2024-407.” Tr. 20:3–5. In particular, Patent Owner acknowledged that “the Board would rely on and import the construction from those IPRs, . . . 2024-407 and ’573 for the sake of consistent office determination.” Id. at 20:9–11. That is, Patent Owner agreed that the Board should use the prior constructions for the same claim terms at issue in this proceeding. Id. at 26:12–16 (“JUDGE MCKONE: -- it sounds like everybody agrees, that we should use the prior claim constructions from [the] other proceedings . . . Do you agree? MR. HECHT: -- if the Board agrees, absolutely.”). Petitioner also agreed that the Board should use the prior constructions. See id. at 31:23–32:3 (“JUDGE MCKONE: And so I assume you want us to use the same claim construction in this case as the previous case[s]; is that correct? MR WOO: That is correct, Your Honor.”). We agree with the parties that, for the sake of consistency, we apply our claim constructions from the previous proceedings. Tr. 20:22–25. As set forth in the previous related proceedings, we determined that the claims do not invoke 35 U.S.C. § 112 ¶ 6. See IPR2024-00405, Paper 24 at 8–25; IPR2024-00407, Paper 25 at 8–26; IPR2024-00573, Paper 27 at 8–29. Thus, for consistency, and for the reasons given in the previous related proceedings, in this proceeding, we also determine that the claims do not invoke 35 U.S.C. § 112 ¶ 6, as discussed below.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We find Patent Owner’s arguments unavailing. In particular, we disagree with Patent Owner’s contention that the District Court provided a construction for “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service,” as recited in claim 1. Although Patent Owner points to the District Court’s Memorandum in Support of Claim Construction Order (id. at 32 (citing Ex. 2002, 26)) to support its contention that the District Court construed the term “enabled,” as we determined in the Decision to Institute, this portion of the District Court’s Memorandum merely discusses that “hybrid device” is not indefinite, and discusses exemplary operations of the “hybrid device” from which a POSITA “could reasonably ascertain the scope of the claim.” See Dec. Inst. 9. As we explained, a determination of whether a term is indefinite is not the same thing as construing a claim term. Id. Thus, as we previously explained, by determining that “hybrid device” is not indefinite, the District Court did not construe the term “enabled.” Id.; see also Ex. 2002, 26. Accordingly, nothing in the Memorandum provides a construction of “enabled” as Patent Owner contends. Id. Thus, we find unavailing Patent Owner’s contention that Buer does not disclose the “enabled” limitation because, in Buer, “no key is provided in exchange for the information.” PO Resp. 33. That is, we decline to adopt Patent Owner’s proposed construction that an application, function or service is “enabled” by a PDK “when it receives information from a PDK in exchange for an access key.” Id. at 32. Here, as Petitioner points out, Buer discloses an authentication component for providing credentials to a service provider to authenticate access to secured services, wherein the authentication component generates an RF signal providing the necessary authentication information to a service provider. Pet. 45; see Ex. 1005 ¶¶ 152, 174. Buer further discloses a mobile device with an RFID client to authenticate a user to another processing system, the mobile device transmitting an enablement signal to a computer with a point-of-sale device. Pet. 47; see Ex. 1005 ¶¶ 192–195. We find availing Petitioner’s contention that Buer’s authentication component “enables” a wide variety of applications, functions, or services. Pet. 56. Petitioner’s contention is supported by Dr. Wolfe’s testimony and is consistent with the teachings of Buer. See Ex. 1003 ¶ 229. Based on the complete record presented, we determine that Petitioner has persuasively shown that Buer teaches “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service on one or more of the hybrid device and a device associated with the external RDC,” as recited in claim 1.” slip op. at 39
Patent outcomesUS 8,646,042 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,646,042 - Apple Inc. v. Proxense, LLCAll claims unpatentablePTAB · Nov 12, 2025 · IPR2024-00782 · APJ Thu A Dang · IPR · Final written decision
Claims 1–6, 8–15, and 17–20 are unpatentable under § 103 over the stated prior-art grounds.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“Here, as Petitioner points out, “[n]one of the elements of the Challenged Claims . . . use the word ‘means,’” similar to the challenged claims in the previous related proceedings. Pet. Reply 2–3; see also IPR2024-00405, Ex. 1001, 22:43–60; IPR2024-00407, Ex. 1001, 22:36–49; IPR2024-00573, Ex. 1001, 21:51–65. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112 ¶ 6. See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112 ¶ 6 is not overcome.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We find Patent Owner’s arguments unavailing. In particular, we disagree with Patent Owner’s contention that the District Court provided a construction for “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service,” as recited in claim 1. Although Patent Owner points to the District Court’s Memorandum in Support of Claim Construction Order (id. at 32 (citing Ex. 2002, 26)) to support its contention that the District Court construed the term “enabled,” as we determined in the Decision to Institute, this portion of the District Court’s Memorandum merely discusses that “hybrid device” is not indefinite, and discusses exemplary operations of the “hybrid device” from which a POSITA “could reasonably ascertain the scope of the claim.” See Dec. Inst. 9. As we explained, a determination of whether a term is indefinite is not the same thing as construing a claim term. Id. Thus, as we previously explained, by determining that “hybrid device” is not indefinite, the District Court did not construe the term “enabled.” Id.; see also Ex. 2002, 26. Accordingly, nothing in the Memorandum provides a construction of “enabled” as Patent Owner contends. Id. Thus, we find unavailing Patent Owner’s contention that Buer does not disclose the “enabled” limitation because, in Buer, “no key is provided in exchange for the information.” PO Resp. 33. That is, we decline to adopt Patent Owner’s proposed construction that an application, function or service is “enabled” by a PDK “when it receives information from a PDK in exchange for an access key.” Id. at 32.” slip op. at 39
- Skill levelOther
“B. Principles of Law 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 non-obviousness.10 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We find Patent Owner’s arguments unavailing. In particular, we disagree with Patent Owner’s contention that the District Court provided a construction for “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service,” as recited in claim 1. Although Patent Owner points to the District Court’s Memorandum in Support of Claim Construction Order (id. at 32 (citing Ex. 2002, 26)) to support its contention that the District Court construed the term “enabled,” as we determined in the Decision to Institute, this portion of the District Court’s Memorandum merely discusses that “hybrid device” is not indefinite, and discusses exemplary operations of the “hybrid device” from which a POSITA “could reasonably ascertain the scope of the claim.” See Dec. Inst. 9. As we explained, a determination of whether a term is indefinite is not the same thing as construing a claim term. Id. Thus, as we previously explained, by determining that “hybrid device” is not indefinite, the District Court did not construe the term “enabled.” Id.; see also Ex. 2002, 26. Accordingly, nothing in the Memorandum provides a construction of “enabled” as Patent Owner contends. Id. Thus, we find unavailing Patent Owner’s contention that Buer does not disclose the “enabled” limitation because, in Buer, “no key is provided in exchange for the information.” PO Resp. 33. That is, we decline to adopt Patent Owner’s proposed construction that an application, function or service is “enabled” by a PDK “when it receives information from a PDK in exchange for an access key.” Id. at 32. Here, as Petitioner points out, Buer discloses an authentication component for providing credentials to a service provider to authenticate access to secured services, wherein the authentication component generates an RF signal providing the necessary authentication information to a service provider. Pet. 45; see Ex. 1005 ¶¶ 152, 174. Buer further discloses a mobile device with an RFID client to authenticate a user to another processing system, the mobile device transmitting an enablement signal to a computer with a point-of-sale device. Pet. 47; see Ex. 1005 ¶¶ 192–195. We find availing Petitioner’s contention that Buer’s authentication component “enables” a wide variety of applications, functions, or services. Pet. 56. Petitioner’s contention is supported by Dr. Wolfe’s testimony and is consistent with the teachings of Buer. See Ex. 1003 ¶ 229. Based on the complete record presented, we determine that Petitioner has persuasively shown that Buer teaches “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service on one or more of the hybrid device and a device associated with the external RDC,” as recited in claim 1. v. Claim 1 Conclusion Based on the complete record presented, Petitioner has shown that Buer teaches all limitations of claim 1. Thus, we determine that Petitioner has shown by a preponderance of the evidence that the subject matter of claim 1 would have been obvious over Buer.” slip op. at 39
Patent outcomesUS 8,646,042 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,646,042 - PTAB · Oct 3, 2025 · IPR2025-00680 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR of claims 2 and 3 on all grounds in the Petition and granted Nintendo’s motion to join IPR2024-00807, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“II. ANALYSIS A. Institution of Inter Partes Review We instituted an inter partes review in the Apple IPR on all challenged claims and all asserted grounds of unpatentability. Apple IPR, Paper 10 (institution decision); see also Apple IPR, Paper 2 (the “Apple Petition”). Petitioner here challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the Apple IPR. Compare Pet. 2, with Apple Petition 1; see also Mot. 1 (asserting the instant “Petition is substantively identical to Apple Inc.’s petition (‘Apple Petition’) in the Apple IPR, including that it relies on the same expert declaration,” and asserting “the same grounds presented in the Apple IPR”). As indicated, Petitioner also relies on the same declarant as did the petition in the Apple IPR. Mot. 1; compare Ex. 1003 (Hannaford Declaration), with Apple IPR, Ex. 1003 (same). Because the grounds of unpatentability in the instant Petition are identical to those in the Apple IPR and for the same reasons stated in our Decision to Institute in the Apple IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See Apple IPR, Paper 10 (analyzing challenges in the Apple Petition).” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition (1) is substantially identical to the Apple Petition, (2) contains the same grounds based on the same evidence, and (3) relies on the same declaration, the Hannaford Declaration (Ex. 1003). Mot. 1, 4. Petitioner represents that “joinder will not negatively impact the Apple IPR trial schedule” and “expressly consents to the existing trial schedule.” Id. at 10; see also id. at 7 (“Proceeding with a consolidated inter partes review would avoid potential inconsistency, promote efficient review of the same claims for the same patent under the same grounds, and would result in a final written decision without delay.”). Petitioner also represents that as “long as Apple remains in the joined IPR, Nintendo remains in a limited ‘silent understudy’ role that does not actively participate in the IPR.” Id. at 8. The record supports Petitioner. In addition, the final written decision in the Apple IPR is due to issue on or before October 15, 2025, with the Oral Hearing complete and no further briefing due. See IPR 2024-00807, Paper 15 (Oral Hearing Transcript); Paper 18, 2–3. Therefore, as Petitioner argues, joinder by Petitioner will have little or no impact on the trial schedule in the Apple IPR. On the other hand, if the Board denies joinder, Petitioner submits that it “intends to file a separate petition for IPR (‘Second Petition’) that includes grounds in addition to some (or all) of the grounds in the Apple IPR.” Mot. 14.” slip op. at 10
NonePatents in suitUS 8,860,337 - Apple Inc. v. Proxense, LLCInstitutedPTAB · Oct 2, 2025 · IPR2025-00562 · APJ Thu A Dang · IPR · Institution
The Board instituted review of claims 1–20 on all three § 103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant Petitioner’s request and institute an inter partes review of all challenged claims.” slip op. at 2
- Prior constructionPrior construction not adoptedDecided for petitioner
“Court provided a construction for “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service,” as recited in claim 1, and “enablement signal enabling one or more of an application, a function and a service.” Prelim. Resp. 1–6. Although Patent Owner points to the District Court’s Memorandum in Support of Claim Construction Order (id. (citing Ex. 2001, 25–26)) to support its contention that the District Court construed the term “enabled,” as we determined in the prior proceedings, this portion of the District Court’s Memorandum merely discusses that “hybrid device” is not indefinite, and discusses exemplary operations of the “hybrid device” from which a POSITA “could reasonably ascertain the scope of the claim.” See Ex. 2001, 26; see also IPR2024-00405, Paper 8 at 11–12; IPR2024-00407, Paper 8 at 12–13; IPR2024-00784, Paper 12 at 10–11. That is, a determination of whether a term is indefinite is not the same thing as construing a claim term. Thus, as we previously explained, by determining that “hybrid device” is not indefinite, the District Court did not construe the term “enabled.” Ex. 2001, 26. Accordingly, although the referenced portion of the District Court’s Memorandum indicates that a POSITA could reasonably ascertain the scope of the claim (id.), nothing in the Memorandum provides a construction of “enabled” as Patent Owner contends. Prelim. Resp. 5. That is, we are unpersuaded that the District Court construed that “‘[a]n application, function, or service is ‘enabled’ by a PDK when it receives information from a PDK in exchange for an access key” or that “hybrid device” includes “an RDC that ‘enable[es] one or more of an application, a function, and a service’ when it forwards such a message to the application, function, or service.” Id. (emphasis omitted, alteration in original). Thus, as in the prior proceedings, we determine that “enabl[ing] one or more of an application a function, and a service” does not require receiving information from a PDK in exchange for an access key or forwarding a message to the application, function, or service.” Id.; see also IPR2024-00405, Paper 8 at 11–12; IPR2024-00407, Paper 8 at 12–13; IPR2024-00784, Paper 12 at 10–11.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Realtime Data, 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. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner proposes claim construction for “Personal Digital Key (PDK).” Pet. 8–9. Patent Owner does not take issue with Petitioner’s proposed construction for “PDK” but instead requests that we “follow the District Court’s construction” for “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service,” as recited in claim 1, and “enablement signal enabling one or more of an application, a function and a service,” with respect to claim 10. Prelim. Resp. 1–2. Because the parties do not take issue with each other’s proposed claim constructions, there is no term of the challenged claims that is in controversy, and thus, we determine that no term requires explicit construction. See Realtime, 912 F.3d at 1375. However, although it is not necessary to construe the term to resolve the disputed issues before us, we note that Patent Owner provides arguments with respect to “enabling one or more of an application, a function, and a service” recited in claims 1 and 10. Prelim. Resp. 1–2. We addressed similar arguments with respect to these terms in previous proceedings with related patents (see IPR2024-00405, Paper 8 at 11–12; IPR2024-00407, Paper 8 at 12–13; IPR2024-00784, Paper 12 at 10–11), and we similarly address Patent Owner’s contention in this proceeding.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“have been motivated to integrate an RDC into Giobbi ’157’s hybrid device for communication with external PDKs based, in part on the teachings of Giobbi ’139.” Pet. 27. In particular, Petitioner contends that Giobbi ’139 “expressly teaches integrating an RDC into the same type of hybrid device disclosed in Giobbi ’157, a cell phone,” wherein “a ‘Personal Digital Key Digital Content Security System (PDK-DCSS) is used to protect computers from unauthorized use and protect the digital content stored on computers from being wrongfully accessed, copied, and/or distributed.’” Id. at 28 (citing Ex. 1005, Abstract). According to Petitioner, “Giobbi ’139 teaches that RDCs should be incorporated into hybrid devices like cell phones because these devices ‘commonly included’ data storage,” wherein “Giobbi ’139 identified such a configuration as an ‘enhancement.” Pet. 29 (citing Ex. 1005 ¶¶ 87–88). Further, according to Petitioner, “Giobbi ’157 teaches that it is advantageous to incorporate PDKs into ‘commonly carried items,’ like phone, since it would eliminate the need for a user to carry a separate PDK device and would reduce the risk of loss.” Id. at 30 (citing Ex. 1005 ¶ 35; Ex. 1003 ¶ 48). In addition, Petitioner contends that “the Dua patent’s RFID system configuration also provides motivation to integrate and RDC into Giobbi ’157’s hybrid device.” Id. In particular, according to Petitioner, “Dua teaches a hybrid device—e.g., a cell phone—which establishes wireless connections with other devices to enable functions and exchange data.” Id. (citing Ex. 1006, 6:46–65).” slip op. at 18
Claim construction§ 103 obviousnessPatents in suitUS 9,049,188
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.