- Google LLC v. Sandpiper CDN, LLCAll claims unpatentablePTAB · Oct 9, 2026 · IPR2025-00826 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–23 are unpatentable under § 103, including over Glines alone and the additional asserted combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the critical time “would have had at least a bachelor’s degree in computer science, electrical engineering, or a related field, and at least two years of work or research experience in the field of content delivery management or networks,” and that “additional education could substitute for work experience.” Pet. 3 (citing Ex. 1008 ¶¶ 51–53). Patent Owner provides substantially the same assessment. PO Resp. 16. We adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’112 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under this standard, the words of a claim generally are given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Neither party proposes any express claim construction. Pet. 3; PO Resp. 16. We address the parties’ interpretation of the scope of “causing said hostname to be resolved” in our discussion of Petitioner’s assertions for limitation [1.d]. Based on the record before us, we determine that no claim term requires express construction.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Strike new argumentNew argument consideredDecided for petitioner
“We do not agree. The Petition states that Glines discloses that the anycast is resolved by an ISP DNS server. Pet. 20. The Petition identifies Glines’s local ISP DNS resolver 18 as the claimed ISP DNS server. Id. The Petitioner further asserts that Glines’s ISP DNS resolver 18 sends the request to the DNS server 38, but states that “Glines’s local DNS resolver, an ISP DNS server, thus causes the hostname . . . to be resolved.” Id. at 21–22. The Petition also drew an analogy with the ’112 patent and the role of local DNS server 70a in the Petition. See Pet. 20–21. Because the Petition and the Reply both identify Glines’s local ISP DNS resolver 18 as causing the hostname to be resolved, Petitioner has not advanced a new theory of unpatentability in its Reply. 6 At oral argument, Patent Owner suggested a narrower claim reading, but admitted that this had not been briefed. Tr. 36:15–38:9, 44:9–16. We do not address this reading because it was not set forth in the briefing. In the briefing, Patent Owner took the broader reading discussed here. See Tr. 41:12–23; PO Sur-reply 7.” slip op. at 13
Patent outcomesUS 9,021,112 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,021,112 - Twitch Interactive, Inc. v. Razdog Holdings LLCAll claims unpatentablePTAB · Jul 27, 2026 · IPR2025-00308 · APJ Aaron W Moore · IPR · Final written decision
The Board held claim 1 unpatentable as obvious over Darnell and Kim, and over Dasgupta and Darnell; Judge Moore dissented as to the Dasgupta and Kim ground.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for patent owner
“2. “Real Time” – The Parties’ Positions In the preliminary phase of this proceeding, the principal claim term” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“1. Rationale to Combine Darnell and Kim Petitioner contends that “Darnell and Kim address similar problems of” slip op. at 35
- Expert testimonyOther
“form of storage or minimal time delay, and Patent Owner concedes as much in this proceeding. See, e.g., Ex. 1082, 125:19–22, 126:3–10; Tr. 41:26– 42:14, 53:20–25. Accordingly, the mere fact that Darnell’s system may aggregate content feeds or content items on a server, merge content, store content, and then deliver content to a user interface, does not preclude it from being done in “real time” as that term would be understood by a person of ordinary skill in the art reading the ’654 patent in its entirety.” slip op. at 48
Patent outcomesUS 10,334,068 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,334,068 - Twitch Interactive, Inc. v. Razdog Holdings LLCAll claims unpatentablePTAB · Jul 27, 2026 · IPR2025-00307 · APJ Kevin C Trock · IPR · Final written decision
Claims 1–18 are unpatentable: the majority finds them obvious over the asserted prior-art combinations, including Darnell and Kim and Dasgupta-based combinations.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“§ 6. This Final Written Decision issues pursuant to 35 U.S.C. § 318(a) (2018) and 37 C.F.R. § 42.73 (2019). For the reasons discussed herein, we determine that Petitioner, Twitch Interactive, Inc., has shown by a preponderance of the evidence that claims 1–18 (the “challenged claims”) of U.S. Patent No. 9,729,658 B2 (Ex. 1001, “the ’658 patent”) are unpatentable. See 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2019).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“2. “Real Time” – The Parties’ Positions In the preliminary phase of this proceeding, the principal claim term” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“1. Rationale to Combine Darnell and Kim Petitioner contends that “Darnell and Kim address similar problems of” slip op. at 37
Patent outcomesUS 9,729,658 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,729,658 - Tesla, Inc. v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Jun 26, 2026 · IPR2025-00220 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1–18 are unpatentable under § 103 over Wallen and Berggren because the combined teachings render the claimed subject matter obvious.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We agree that Patent Owner’s proposed claim construction is wholly unsupported by, and inconsistent with, the language of independent claims 1, 7, and 13, and the aims of the ’670 Patent Specification. See Ex. 1001, 2:3– 25, 9:32–10:5, 12:51–67, 18:54–19:6, 19:26–42, 20:12–26. Moreover, the cited extrinsic evidence––testimony by Patent Owner’s expert Dr. Lomp–– does not support Patent Owner’s proposed construction because it is internally inconsistent and also undermined by Dr. Lomp’s inconsistent deposition testimony. See Ex. 1036, 11:6–17, 12:9–12; Ex. 2010 ¶¶ 40, 48. Similarly, the extrinsic evidence cited by Petitioner (e.g., Exs. 1037, 1038, 2009) undermines Patent Owner’s position emphasizing the intended recipient devices of SIB1. In summary, we decline to adopt Patent Owner’s proposed claim construction because it is unsupported by the claim language, the ’670 Patent Specification, and the cited extrinsic evidence. with the ordinary and customary meaning which does not include limiting SIB1 to an ordinary legacy SIB and excluding MTC specific SIBs or SIBs intended for MTC devices. In addition, we need not construe explicitly any other claim term or phrase. See, e.g., Nidec Motor Corp. 868 F.3d at 1017 (“[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 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a bachelor’s degree from an accredited program in electrical engineering, computer engineering, computer science, or equivalent training, and at least two years of professional experience relating to wireless communication technology” and “[l]ack of professional experience can be remedied by additional education, and vice versa.” Pet. 15–16 (citing Ex. 1003 ¶¶ 19–21). Patent Owner does not dispute Petitioner’s definition. See generally PO Resp. We find that “at least” in Petitioner’s formulation of the level of skill in the art is vague and open-ended. Otherwise, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’670 Patent Specification and the prior art of record. slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“filing date. As explained above, the burden of production shifted to Patent Owner to show that Wallen is not prior art because the ’670 Patent is entitled to the earlier January 20, 2012, filing date of foreign priority application GB1201000. See Dynamic Drinkware, 800 F.3d at 1379–1380. For a claim in a later-filed application to be entitled to the filing date of an earlier application, the earlier application must provide written description support for the claimed subject matter. Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1337 (Fed. Cir. 2010). To satisfy the written description requirement, “a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997); see also VasCath v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“[T]he applicant must . . . convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention . . . now claimed.” (emphasis omitted)), Ariad Pharm. Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (“[I]t is the specification itself that must demonstrate possession.”). Patent Owner’s arguments fail to meet this burden of production because, aside from addressing a system information block 1, Patent Owner’s arguments do not substantively address how GB1201000 provides written description support for any other limitations of the claimed invention. See PO Resp. 43, 57. Accordingly, Patent Owner has not met its burden of production in coming forward with evidence or argument to show possession of the claimed invention in foreign priority application GB1201000, the burden of production did not shift back to Petitioner, and,” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“primary synchronization signal (PSS), a secondary synchronization signal (SSS), and a physical broadcast channel (PBCH) including a master information block (MIB).” See Pet. 41–42 (citing Ex. 1003 ¶¶ 70–75; Ex. 1005 ¶¶ 76, 77, 83–84). Petitioner implicitly acknowledges that Wallen does not expressly disclose a physical broadcast channel (PBCH), but relies on Berggren for confirming that the LTE standard specifies that a PBCH carries the MIB. See Pet. 42–43 (citing Ex. 1003 ¶ 74; Ex. 1007 ¶¶ 73–75). According to Petitioner, “a person of ordinary skill in the art would have been motivated to transmit Wallen’s MIB using a PBCH as taught by Berggren.” Pet. 43 (citing Pet. 33–38). In particular, Petitioner asserts that a person of ordinary skill in the art “would have been motivated for Wallen’s LTE system to utilize the LTE standard implementation details taught by Berggren,” and “it would have been predictable and beneficial for Wallen’s user equipment to receive the MIB in the [PBCH], as was standard in LTE.” Pet. 34 (citing Ex. 1003 ¶ 58), 37 (citing Ex. 1003 ¶ 63). According to Petitioner, “the combination is nothing more than ‘the predictable use of prior art elements according to their established functions.’” Pet. 38 (citing KSR, 550 U.S. at 417). Based on the entire record developed during trial, we are persuaded by a preponderance of the evidence that Petitioner provides sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to a person of ordinary skill in the art to modify Wallen’s broadcast MIB with Berggren’s teachings of using a PBCH for transmitting broadcast MIBs. See Pet. 33–38; KSR, 550 U.S. at 418.” slip op. at 24
Patent outcomesUS 11,206,670 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,206,670 - Tesla, Inc. v. Intellectual Ventures II LLCNo claims unpatentablePTAB · Jun 23, 2026 · IPR2025-00219 · APJ Frederick C Laney · IPR · Final written decision
Claims 11–22 were not shown unpatentable under any § 103 ground because the prior art did not teach or suggest receiving the claimed resource allocation and multi-level TPC command on one physical channel.
RulingsFinal written decision- BurdenNot shown unpatentable
“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 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). Moreover, a petitioner should 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103, effective March 16, 2013. Because the application from which the ’153 patent issued claims priority to an application filed before this date, the pre-AIA version of § 103 applies. not “place the burden on [the Board] to sift through information presented by the Petitioners, determine where each element [of the challenged claims] is found in [the cited references], and identify any differences between the claimed subject matter and the teachings of [the cited references.]” Google Inc. v. EveryMD.com LLC, IPR2014-00347, Paper 9 at 25 (PTAB May 22, 2014).” slip op. at 5
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“The second and third asserted benefits—reduced complexity and reduced latency—rest on the declaration of Dr. Kotzin (Ex. 1003 ¶ 64) rather than on any disclosure of Andersson or Khan. We accord that testimony little weight on this point because it asserts the benefits in conclusory terms without explaining why they would result from inserting a scheduling grant into Andersson’s undefined “other bits,” as distinct from Khan’s separate-slot design.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art Petitioner asserts that ordinarily skilled artisans “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of wireless communication systems or design of similar communication systems.” Pet. 14. Petitioner’s proposed definition, which Patent Owner does not dispute, appears reasonable and consistent with the asserted prior art and the ’500 Patent. Therefore, we adopt it as the ordinary level of skill of an artisan in the field of the patented technology for our analysis below.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner offers a proposed construction for the recited “single physical channel” found in limitation 11.2 and “an accumulation of TPC commands” found in independent claims 12 and 18. PO Resp. 9–17. Petitioner likewise addresses the scope of an accumulation of TPC commands, but Petitioner does not contest directly Patent Owner’s proposed construction for “single physical channel.” Pet. Reply 2–7. We determine, however, that no express construction of any claim term is necessary to resolve the dispute between the parties. 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
Patent outcomesUS 9,706,500 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,706,500 - Tesla, Inc. v. Intellectual Ventures II LLCNo claims unpatentablePTAB · Jun 22, 2026 · IPR2025-00217 · APJ Frederick C Laney · IPR · Final written decision
The Board held claims 1–5, 10–15, and 20 not unpatentable under four §103 grounds because the petitioner did not establish the claimed enabled-accumulation indication or single-channel combination.
RulingsFinal written decision- BurdenNot shown unpatentable
“onset to show with particularity why the patent it challenges is 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103, effective March 16, 2013. Because the application from which the ’153 patent issued claims priority to an application filed before this date, the pre-AIA version of § 103 applies. 2 US 6,334,047 B1, iss. Dec. 25, 2001 (Ex. 1009). 3 US 2001/0036238 A1, pub. Nov. 1, 2001 (Ex. 1010) 4 US 2004/0190485 A1, pub. Sept. 30, 2004 (Ex. 1005). 5 US 2004/0077370 A1, pub. Apr. 22, 2004 (Ex. 1008). 6 US 6,600,772 B1, iss. July 29, 2003 (Ex. 1004). 7 US 6,529,741 B1, iss. Mar. 4, 2003 (Ex. 1007). 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 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). Moreover, a petitioner should not “place the burden on [the Board] to sift through information presented by the Petitioners, determine where each element [of the challenged claims] is found in [the cited references], and identify any differences between the claimed subject matter and the teachings of [the cited references].” Google Inc. v. EveryMD.com LLC, IPR2014-00347, Paper 9 at 25 (PTAB May 22, 2014).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art Petitioner asserts that ordinarily skilled artisans “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of wireless communication systems or design of similar communication systems.” Pet. 15. Petitioner’s proposed definition, which Patent Owner does not dispute, appears reasonable and consistent with the asserted prior art and the ’153 patent. Therefore, we adopt it as the ordinary level of skill of an artisan in the field of the patented technology for our analysis below.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“apparent agreement between the parties: “TPC command accumulation” refers to a process that collects and uses TPC commands from a network device to cumulatively affect transmission power. And having studied the intrinsic record of the ’153 patent, we are in accord. But, we decline to further limit the construction of “TPC command accumulation” in the manner proposed by either party––i.e., (1) each TPC command adjustment must be summed to cumulatively affect transmission power (as proposed by Petitioner) or (2) a TPC command value must be added to an integrator. Although both parties are able to point to disclosures in the ’153 Patent where the TPC command accumulation of an exemplary embodiment is described as using an integrator and/or summing each TPC command adjustment to cumulatively affect a UE’s transmission power (PO Resp. 16 (citing Ex. 1001, 3:39–43, 7:15–29, 9:27–42; Ex. 2016 ¶¶ 35–42); Pet. Reply 4–5 (citing Ex. 1001, 3:39–43, 7:2–6, 7:8–22, 9:28–40)), neither party has demonstrated persuasively that the intrinsic record of the ’153 Patent demonstrates a clear intent to limit “TPC command accumulation” to those particular embodiments.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“A rationale supports obviousness only where the proffered benefit would flow from the specific modification proposed; a benefit that the prior art realizes in a different structural context does not, without more, establish that the same benefit would result from inserting one reference’s element into the other. On this record, the nexus between Khan’s benefits and Petitioner’s “other bits” modification is missing.” slip op. at 40
Patent outcomesUS 10,952,153 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,952,153 - Reolink Innovation Inc. / Shenzhen Reolink Technology Co., Ltd. v. Throughtek Co. Ltd.Adverse judgmentPTAB · May 19, 2026 · IPR2025-01327 · APJ Sheila F Mcshane · IPR · Adverse judgment
The Board entered adverse judgment against Throughtek on claims 1–19 after finding it abandoned the contest by failing to file mandatory notices or respond to the show-cause order.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“The Order to Show Cause explained that under 37 C.F.R. § 42.73(b), “[a]ctions construed to be a request for adverse judgment include . . . [a]bandonment of the contest.” Paper 8, 3. The Order to Show Cause also explained that failure to participate in a proceeding, such as failure to file mandatory notices as required under 37 C.F.R. § 42.8, may be considered abandonment of the contest and result in adverse judgment against Patent Owner under 37 C.F.R. § 42.73(b). Id. (citing Cellpak, Inc. v. Mambate USA Inc., IPR2021-00007, Paper 4 at 2 (PTAB Mar. 23, 2021)). The Order to Show Cause gave Patent Owner ten calendar days to show cause why adverse judgment should not be entered against it. Id. Patent Owner did not respond to the Order to Show Cause. More than ten calendar days have elapsed since the date the Order to Show Cause was entered, and Patent Owner has not filed mandatory notices. In view of Patent Owner’s failure to file mandatory notices within the specified time period, we determine that Patent Owner has abandoned the contest. Pursuant to 37 C.F.R. § 42.73(b)(4), we construe Patent Owner’s abandonment of the contest as a request for adverse judgment. Under these circumstances, we determine that entry of judgment against Patent Owner is appropriate.” slip op. at 3
NonePatents in suitUS 9,727,655 - Snap Inc. v. You Map Inc.All claims unpatentablePTAB · May 4, 2026 · IPR2022-00568 · APJ Jason M Repko · IPR · Remand
Claims 1–20 remain unpatentable; the contingent motion to amend is denied because the proposed substitute claims would have been obvious over Feldman and Jackson in view of ordinary skill.
RulingsRemand decision- RemandDecided for patent owner
“challenge fails even if Petitioner’s summary of the references were correct because Petitioner did not present a sufficient reason to modify Feldman to include a current zoom level in its search request. FWD 56. The Federal Circuit vacated this finding specifically and contemplated that there would be a “consideration of obviousness” on remand. CAFC Dec. 10–11. That consideration requires more than determining whether any one reference teaches a current zoom level and a search, generally. See FWD 56 (quoting MTA Reply 10). Here, Petitioner’s challenge is based on modifying the Feldman-Jackson combination. So the Board must determine on remand whether the Feldman-Jackson combination in view of knowledge of a POSA meets the claim limitations at issue. We also disagree to the extent that Petitioner argues that the Board is precluded from considering additional arguments on the relevant issues on remand. The Board’s preliminary guidance on the Motion to Amend stated that Petitioner’s obviousness rationale was based on convenience and this reason was not sufficiently supported: reference lacks a sufficient explanation of why one of ordinary skill in the art would have added the zoom levels in the prior art to Feldman. See id. At most, Petitioner argues that it would be convenient to “specify the area the user desires to search for content” in this way. Id. at 14. But, on this record, Petitioner has not sufficiently explained why it would be convenient to do so in Feldman. See id. Nor has Petitioner sufficiently explained how or why the prior-art features confer this convenience. See id. MTA PG, 13. Because the Board’s conclusion turned on the lack of sufficient explanation, the briefing that followed was limited to Petitioner’s obviousness rationale. See, e.g., MTA Reply 9–12, MTA Sur-reply 1–12. Under these specific circumstances, we determine that it would be procedurally fair to fully consider the arguments on remand about whether the cited prior art teaches or suggests the limitations recited in the substitute claims. And, as discussed above, the Federal Circuit has directed the Board to consider obviousness. CAFC Dec. 10–11.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See PO Resp.; Sur-reply. Patent Owner’s expert, Dr. Shamos, and provides substantially the same expression of the level of ordinary skill in the art. Ex, 2003 ¶¶ 30–31; see FWD 6–7. In this Decision, we apply Petitioner’s proposed definition.” slip op. at 6
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“In sum, Petitioner has shown that replacing Feldman’s radius with Badger’s zoom level meets all the limitations of the claim considered in the context of the Feldman-Jackson combination. Also, the evidence shows a motivation to modify the radius in Feldman’s search request to instead be based on the zoom-level parameter disclosed in Badger. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023) (“There is a motivation to combine when a known technique ‘has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way,’ . . . using the ‘prior art elements according to their established functions.’”) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)). substitute claim 21 is unpatentable over Feldman, Jackson, and knowledge of one of ordinary skill in the art. See Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1337 (Fed. Cir. 2020) (“[U]nder 35 U.S.C. § 103, the obviousness inquiry turns not only on the prior art, but whether ‘the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious . . . to a person having ordinary skill in the art to which the claimed invention pertains.’”).” slip op. at 19
- Strike new argumentNew argument consideredDecided for patent owner
“precluded from considering additional arguments on the relevant issues on remand. The Board’s preliminary guidance on the Motion to Amend stated that Petitioner’s obviousness rationale was based on convenience and this reason was not sufficiently supported: reference lacks a sufficient explanation of why one of ordinary skill in the art would have added the zoom levels in the prior art to Feldman. See id. At most, Petitioner argues that it would be convenient to “specify the area the user desires to search for content” in this way. Id. at 14. But, on this record, Petitioner has not sufficiently explained why it would be convenient to do so in Feldman. See id. Nor has Petitioner sufficiently explained how or why the prior-art features confer this convenience. See id. MTA PG, 13. Because the Board’s conclusion turned on the lack of sufficient explanation, the briefing that followed was limited to Petitioner’s obviousness rationale. See, e.g., MTA Reply 9–12, MTA Sur-reply 1–12. Under these specific circumstances, we determine that it would be procedurally fair to fully consider the arguments on remand about whether the cited prior art teaches or suggests the limitations recited in the substitute claims. And, as discussed above, the Federal Circuit has directed the Board to consider obviousness. CAFC Dec. 10–11.” slip op. at 11
Patent outcomesUS 10,616,727 unpatentable§ 103 obviousnesscites KSRPatents in suitUS 10,616,727 - Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Some claims unpatentablePTAB · Apr 29, 2026 · IPR2024-01493 · APJ John D Hamann · IPR · Final written decision
Claims 1, 3, 5, 7–11, 14, and 15 are unpatentable as obvious; claims 2, 4, 6, 12, and 13 were not shown unpatentable because the references did not establish entirely crystallized CoFeB layers.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Decision on Institution, we adopted the definition Petitioner proposes for one having ordinary skill in the art at the time of the invention of the ’167 patent. Dec. on Inst. 6. Namely, we found that one of ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent.” Id. (citing Pet. 20 (citing Ex. 1024 ¶ 25)). We also found that “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Id. Patent Owner does not address Petitioner’s definition, nor provide its own. See generally PO Resp. Because Petitioner’s definition of the level of skill in the art is consistent with the ’167 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Here, neither party sets forth any term for claim construction. Pet. 17; see generally PO Resp. Thus, for purposes of this Decision, we afford the claim terms their plain and ordinary meaning. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“In addition, we agree with Petitioner and find that one of ordinary skill in the art “would have been motivated to replace either or both of Bowen’s electrodes with CoFeB to increase TMR and lower Hf [(coupling field)] and Hc [(coercivity)].” Pet. 24, 27; Ex. 1055,30 2270 (“[I]t is natural to replace both the free and pinned layers to CoFeB to further increase the TMR value.”); Ex. 105631 ¶¶ 67–68 (“[B]oth the ferromagnetic layers 5, 7 are made of an FeCoB”32 for “improvement of the TMR ratio.”); Ex. 1024 ¶¶ 129, 132. We credit Dr. Bokor’s cited testimony as it is consistent with the cited evidence. Moreover, as Petitioner explains, “[r]esearchers were . . . interested in optimizing MTJs to improve MRAM performance,” and “[h]igher TMRs long promised improved performance for MRAM.” Pet. 6 30 Dexin Wang et al., 70% TMR at room temperature for SDT sandwich junctions with CoFeB as free and reference layers, 40 IEEE Trans. Magn. 2269–71 (July 2004). 31 US 2004/0136232 A1, published July 15, 2004, to Hosomi. 32 We find persuasive Dr. Bokor’s testimony that “a skilled artisan [would have] understood that CoFeB and FeCoB refer to the same alloy.” Ex. 1024 ¶ 121. 36–44) (emphasis omitted). In addition, we agree with Petitioner that one of ordinary skill in the art “would have found it obvious to use Parkin’s CoFeB layer in place of Bowen’s electrodes to increase TMR” in light of Parkin’s explicit teachings. Pet. 27; Ex. 1024 ¶ 133. In particular, Parkin explicitly teaches that “very high TMR values are unexpectedly found for MTJs with highly textured (100) MgO tunnel barriers but with nominally amorphous storage layers.” Ex. 1062, 18:49–51. Notably, Parkin provides that “[t]he TMR of the device of F[igure] 3A is nearly two times higher than the highest TMR ever reported in prior art devices using conventional alumina tunnel barriers.” Id. at 18:63–65; Pet. 27. And as we discuss above, Parkin teaches that Figure 3A’s MTJ may be inverted, such that the storage layer is formed beneath the tunnel barrier. Ex. 1062, 17:7–10. In addition, we agree that one of ordinary skill in the art would have had a reasonable expectation of success in modifying Bowen in the manner Petitioner proposes, as forming electrodes with CoFeB alloys was known. Pet. 28. As Petitioner argues, “forming electrodes with CoFeB alloys in MTJs was known and had been successfully done,” and thus we are persuaded that “one of skill would have found it to be a straightforward, predictable, and desirable improvement to TMR, Hf, and Hc in Bowen’s” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We find unavailing Patent Owner’s arguments that Bowen teaches a “radically different manufacturing process[] from the claimed invention,” and that Bowen “went to heroic lengths to provide a crystalline (001) bottom electrode that provides a template for epitaxially growing a crystalline MgO(001) layer.” PO Resp. 2 (emphasis omitted). Patent Owner describes in detail Bowen’s specific manufacturing process, including the specific structure of the MTJ manufactured, and argues the claimed invention differs. PO Resp. 30–33. These arguments are inapposite. Petitioner cites the specific teachings Petitioner relies on from Bowen, rather than adopting the entirety of Bowen’s process or MTJ. See, e.g., Pet. 21–36 (citing the portions of Bowen—that in combination with Parkin—teach claim 1). Petitioner is not “compelled to adopt every single aspect of [Bowen’s] teaching without the exercise of independent judgment.” Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). We also find unavailing Patent Owner’s argument that Bowen and Parkin each teach away from Petitioner’s combination because Parkin used boron to avoid crystalline electrodes whereas Bowen tried to achieve perfect crystalline electrodes. PO Resp. 4. As we discuss above, one of ordinary skill in the art would have been motivated to replace Bowen’s electrodes with CoFeB to increase TMR. And Patent Owner does not identify in either reference a specific teaching that criticizes, discredits, or otherwise 35 M. Jimbo et al., Thermal stability of spin valves using amorphous CoFeB, 165 J. Magnetism & Magnetic Materials 308–11 (1997) (“Jimbo”). combination. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).” slip op. at 23
Patent outcomesUS 10,680,167 mixedClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,680,167 - Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1No claims unpatentablePTAB · Apr 28, 2026 · IPR2024-01494 · APJ Justin T Arbes · IPR · Final written decision
The Board found claims 5, 6, and 9–20 not shown unpatentable over either Bowen and Soukup or Nagahama and Soukup under § 103.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that at the time of the ’909 patent (2004), a person of ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” where “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Pet. 18–19. In the Decision on Institution, we agreed with and applied Petitioner’s proposed definition. Dec. on Inst. 9. Patent Owner does not propose a different level of ordinary skill in the art in its Response. Both experts utilized Petitioner’s proposed definition. See Ex. 1024 ¶ 25; Ex. 2053 ¶¶ 29–30. Based on the full record developed during trial, including our review of the ’909 patent and the types of problems and solutions described in the ’909 patent and cited prior art, we maintain the previously adopted definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Interpretation We interpret the claims of the challenged patent using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such [claims] as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner argues that “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary.” Pet. 15. We did not interpret any terms in the Decision on Institution. Dec. on Inst. 9–10. Patent Owner does not propose interpretations of any claim terms in its Response. We conclude, based on the full trial record, that no term requires express interpretation to determine whether Petitioner has met its burden to prove unpatentability of the challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (emphasis added) (citation omitted)).” slip op. at 8
- Strike new argumentNew argument disregardedGranted in part
“Pursuant to 37 C.F.R. § 42.23(b), “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response.” “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Patent Trial and Appeal Board Trial Practice Guide § II.I, available at https://www.uspto.gov/patents/ptab/trial-practice-guide (last updated Dec. 12, 2025). “While replies . . . can help crystalize issues for decision, a reply . . . that raises a new issue or belatedly presents evidence may not be considered.” Id. An indication that a new issue is improperly raised in a reply is where a petitioner submits “new evidence necessary to make out a prima facie case” of unpatentability, such as a “newly raised rationale to combine the prior art references that was not expressed in the petition.” Id. That is the case here. Petitioner’s rationale in the Petition for why a person of ordinary skill in the art would have been motivated to lower Bowen’s 0.9 eV barrier height to 0.33 eV based on Soukup was that such an artisan would have expected lowering the barrier height to increase TMR. See Pet. 34–36. Faced with Dr. Bokor’s testimony on cross-examination, Petitioner presents a new theory in its Reply that a person of ordinary skill in the art would not have known what impact lowering the barrier height would have (increase TMR, decrease it, or have no impact at all), but would have expected it to change in some “uncertain” way, which is a “legally sufficient motivation” in Petitioner’s view. See Reply 6–10, 13–16, 23–25. In other words, “[r]ather than explaining how its original” position that lowering barrier height would increase TMR “was correct,” Petitioner articulated “an entirely new theory . . . absent from the [P]etition” after Patent Owner cross-examined Dr. Bokor and “pointed out the flaws of [Petitioner’s] position” in its Response. See Wasica Finance GmbH v. Continental Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017). “Shifting arguments in this fashion is foreclosed by statute, [Federal Circuit] precedent, and Board guidelines.” Id.” slip op. at 20
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Ultimately, the cross-examination testimony above is inconsistent with Dr. Bokor’s opinions in his declaration that, for example, “[i]t was understood to one of skill that lowering the barrier height to increase tunneling would have increased the TMR,” and “[o]ne of skill would have been motivated to adjust oxygen vacancy defects to improve TMR by lowering the barrier height.” See Ex. 1024 ¶¶ 176, 277 (emphasis added); see also id. ¶ 172 (“[O]ne of skill in the art would have been motivated to use [Soukup’s 0.33 eV] or similar height in an MgO MTJ to improve tunneling and hence TMR in Bowen.”). Accordingly, we do not find Dr. Bokor’s declaration testimony regarding a motivation to lower Bowen’s barrier height credible. It is Petitioner’s burden to provide a reasoned, evidence-supported explanation for why a person of ordinary skill in the art would have been motivated to lower Bowen’s 0.9 eV barrier height to 0.33 eV as disclosed in Soukup. See NuVasive, 842 F.3d at 1383; Magnum Oil, 829 F.3d at 1380; TriVascular, 812 F.3d at 1066. Petitioner’s reasoning in the Petition that lowering the barrier height (by introducing oxygen defects) would increase TMR is unsupported by evidence.” slip op. at 31
Patent outcomesUS 11,968,909 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,968,909
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.