- PTAB · Dec 10, 2025 · IPR2025-01069 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on claims 1–14 and all asserted grounds, finding a reasonable likelihood of prevailing based on Bharadwaj alone and Bharadwaj with Yu.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. Paper 11. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “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 explained below, we institute an inter partes review of all challenged claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“To the extent Patent Owner contends that a person of ordinary skill in the art need not be defined as of the critical date, we disagree. Under Section 103, we must determine “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains” (emphasis added). “Obviousness is determined from the vantage point of a hypothetical person having ordinary skill in the art to which the patent pertains.” In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998). Thus, we define the hypothetical person of ordinary skill in the art as of a time before the effective filing date. To the extent Patent Owner’s argument is that, to testify from the perspective of a person of ordinary skill in the art, one need not have been a person of ordinary skill in the art as of the critical date, we agree. Although one must at least possess ordinary skill in the art to testify from the perspective of a person of ordinary skill, [a]n expert need not have acquired that skill level prior to the time of the invention to be able to testify from the vantage point of a person of ordinary skill in the art. Rather, an expert can acquire the necessary skill level later and develop an understanding of what a person of ordinary skill knew at the time of the invention. Osseo Imaging, LLC v. Planmeca USA Inc., 116 F.4th 1335, 1341 (Fed. Cir. 2024). the uncontested assessment offered by Petitioner, which appears consistent with the ’077 patent and the asserted prior art, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“C. Claim Construction The parties agree that no claim terms require express construction. Pet. 10; Prelim. Resp. 2–4. Patent Owner, however, notes that, in related district court litigation, Petitioner has asserted that some claims terms are indefinite. Patent Owner argues that the Petition should be denied because Petitioner has taken inconsistent claim construction positions between the district court and the Board. Paper 14 at 1–3 (citing Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025-00340, Paper 18 at 4 (PTAB Nov. 5, 2025) (informative); Revvo Techs., Inc. v. Cerebrum Sensor Techs., Inc., IPR2025-00632, Paper 20 at 4–5 (PTAB Nov. 3, 2025) (precedential)). Petitioner responds that, in the related district court litigation, the parties have narrowed the claim construction disputes and that Petitioner accords the plain and ordinary meaning to claim terms and no longer asserts that any claim term of the ’077 patent is indefinite. Paper 15 (citing, inter alia, Ex. 1126 (Defendants’ Responsive Claim Construction Brief)). The evidence supports Petitioner’s position because, in the related district court litigation, the defendants agree with the plaintiff (Patent Owner) that certain phrases in the ’077 patent claims should be given their “[p]lain and ordinary meaning” and are “not indefinite.” Ex. 1126, 6 (native page 1). Thus, the record does not show inconsistent claim construction positions that warrant denial under PTAB precedent. See Revvo, Paper 20 at 5 (addressing a situation in which a petitioner advances “different claim construction positions” in district court and at the PTAB). 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))).” slip op. at 7
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“We agree with Patent Owner that Bharadwaj includes subject matter that is not in Bharadwaj-Prov59, namely the change from adding the value Resp. 20; Ex. 1007 ¶ 51 (adding m); Ex. 1006 ¶ 50 (subtracting m); Prelim. Resp. 20. Petitioner, however, points out this change in the Petition and acknowledges that it is after the identified critical date of August 20, 2015. See Pet. 28. Thus, we do not understand Petitioner to be relying on Bharadwaj’s disclosure of subtracting m to determine length, as disclosed in the publication of the non-provisional application, as a prior art disclosure. We understand Petitioner to be relying on disclosures in Bharadwaj-Prov059 for prior art teachings for its obviousness contentions. Patent Owner does not appear to dispute that Bharadwaj-Prov59’s disclosures are prior art, arguing instead that it is improper to rely “on matters in Bharadwaj beyond ‘incorporation by reference’ of the Bharadwaj-Prov59.” See Prelim. Resp. 20–21. On this record, we determine that Bharadwaj-Prov59’s disclosures are prior art as of its June 2, 2015, filing date by virtue of its incorporation by reference into Bharadwaj, a published US patent application. Ex. 1006 ¶ 1; see Pet. 12–13.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,313,077 - Apple Inc. v. Theta IP, LLCSome claims unpatentablePTAB · Nov 25, 2025 · IPR2024-00819 · APJ Russell E Cass · IPR · Final written decision
Claims 1–19 are unpatentable as obvious over Behbahani, Leete, and Tan; claim 20 was not shown unpatentable because the references did not teach its required comparison of desired and interferer signal strengths.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner thus proposes a Master’s degree with two years of experience, while Patent Owner proposes a Bachelor’s degree with five years of experience. At the institution stage, we did not see a material difference in the proposals given that both parties also indicate that more education could substitute for less experience and vice versa, and thus adopted Patent Owner’s proposal. Inst. Dec. 9. We requested that the parties address during trial if either believed that the choice of one proposal over the other would make a difference in the patentability analysis. Id. Neither party has done so. Accordingly, because nothing in the record persuades us that our preliminary finding in the Institution Decision was incorrect, and because neither party has challenged our finding, we maintain our adoption of Patent Owner’s proposed level of ordinary skill in the art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Here, as in the Director’s example, Petitioner advanced a narrower construction of the dynamic limitations before the district court, which the district court declined to adopt. Pet. 9; Ex. 2015; Ex. 2025, 31–47. Instead, the district court adopted a “plain-and-ordinary meaning” construction, which Patent Owner proposed. PO Resp. 38; PO Sur-reply 10 n.2; Ex. 2015; Ex. 2025, 31–47. In the Petition, Petitioner proposed applying the plain and ordinary meaning construction that had already been preliminarily adopted by the district court. Compare Pet. (filed May 1, 2024) with Ex. 2015 (preliminarily adopting plain and ordinary meaning construction on March 25, 2024). Applying Revvo, we find that Petitioner had a sufficient reason for advancing the broader, court-adopted construction in this IPR. Thus, we give the dynamic limitation its plain-and-ordinary meaning, which is “adjusting during operation based—at least in part—on information gained during operation.”” slip op. at 13
- Prior constructionPrior construction adoptedDecided for patent owner
“In our Institution Decision, we stated that we “will give the term ‘signal path’ its ‘plain and ordinary meaning’ and not limit it only to analog components, as the district court found and the parties agree.” Inst. Dec. 11. Given that the parties continue to agree on this point, we see no need to depart from the construction we adopted in our Institution Decision. Moreover, applying Revvo, we find that Petitioner had a sufficient reason for advancing the broader, court-adopted construction in this IPR for the same reasons as discussed above. In this proceeding, the dispute between the parties concerns the application of this and the surrounding claim language (i.e., “in the receiver signal path,” “in the signal path”) to the disclosures in Behbahani. See PO Resp. 43–45. Therefore, we will provide further discussion in the context of the parties’ arguments regarding Behbahani below. However, we agree with Patent Owner’s plain reading of the claim language to the extent it requires adjusting an impedance and/or bias current of a circuit while it is in the signal path. See Id. at 50–51.” slip op. at 14
- Expert testimonyPatent owner expert discountedOther
“Patent Owner’s arguments generally fail to address why Behbahani’s Variable Bandpass Filter Block does not teach the recited “plurality of circuits [comprising/including] . . . a filter,” and instead focus on why the low-pass and high-pass filter circuits do not teach the limitation, which is not Petitioner’s position. As stated above, we agree with Patent Owner’s plain reading of the claim language – i.e., that it “requires adjusting the bias, in or of a circuit.” See PO Resp. 49. However, Patent Owner’s reading of the claim does not persuasively address why the Variable Bandpass Filter Block does not teach the recited “circuit.” We have reviewed Dr. Larson’s cited testimony and disagree with Patent Owner that he provided “a well-supported opinion . . . as to why a [person of ordinary skill in the art] would not understand the entire bandpass box to be a single ‘circuit,’ or to reflect variation in ‘an impedance’ or ‘a bias’ in the claims.” Sur-reply 4 (citing Ex. 2020 ¶¶ 46–48, 71, 74–83). Dr. Larson testifies that the ’330 patent (which has the same specification as the ’164 patent) “teach[es] these adjustments [that dynamically change operating parameters] as changes effected in a single circuit block.” Ex. 2020 ¶ 46 (citing, e.g., Ex. 1001, Figs. 8A, 9A, 8:20–25, 8:36–39, 9:36–59, 10:1–18 (emphasis added)). Dr. Larson does not provide further explanation as to what he means by a “single circuit block,” but relies on Figures 8A and 9A, which show a “function block,” and other disclosures referring to a “function block.” See id. There is no dispute that the recited “circuit” in the receiver signal path is referring to these “function blocks.” See Tr. 22:20–23:4. The ’164 patent states that Figure 8A, which includes function block 820, is “an embodiment of the present invention” 8:28–30. Similarly, Figure 9A, which includes function block 920, “illustrate[s] one of the possible power saving techniques.” Id. at 3:41–42. The ’164 patent describes that “[f]unctional block 820 . . . may be a filter, mixer, amplifier, or other circuit or circuits in a wireless transceiver or other electronic circuits or system.” Id. at 8:30–33 (emphasis added). Based on these disclosures, we are not convinced that Function Block 820 or 920 cannot include multiple filters in a Variable Bandpass Filter Block, or that Behbahani’s Variable Bandpass Filter Block does not teach the recited “circuit.” Dr. Larson also relies on Figure 6 of the ’164 patent to conclude that” slip op. at 45
Patent outcomesUS 11,564,164 mixedClaim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,564,164 - Apple Inc. v. Theta IP, LLCAll claims unpatentablePTAB · Nov 24, 2025 · IPR2024-00816 · APJ Russell E Cass · IPR · Final written decision
Claims 1–7, 9–13, 16, 23, 25–27, and 29 are unpatentable as obvious over Behbahani, Leete, and Tan.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner thus proposes a Master’s degree with two years of experience, while Patent Owner proposes a Bachelor’s degree with five years of experience. At the institution stage, we did not see a material difference in the proposals given that both parties also indicate that more education could substitute for less experience and vice versa, and thus adopted Patent Owner’s proposal. Inst. Dec. 11. We requested that the parties address during trial if either believed that the choice of one proposal over the other would make a difference in the patentability analysis. Id. Neither party has done so. Accordingly, because nothing in the record persuades us that our preliminary finding in the Institution Decision was incorrect, and because neither party has challenged our finding, we maintain our adoption of Patent Owner’s proposed level of ordinary skill in the art.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Here, as in the Director’s example, Petitioner advanced a narrower construction of the dynamic limitations before the district court, which the district court declined to adopt. Pet. 10; Ex. 2015; Ex. 2025, 31–47. Instead, the district court adopted a “plain-and-ordinary meaning” construction, which Patent Owner proposed. PO Resp. 36–38; PO Sur-reply 10 n.2; Ex. 2015; Ex. 2025, 31–47. In the Petition, Petitioner proposed applying the plain and ordinary meaning construction that had already been preliminarily adopted by the district court. Compare Pet. (filed May 1, 2024) with Ex. 2015 (preliminarily adopting plain and ordinary meaning construction on March 25, 2024). Applying Revvo, we find that Petitioner had a sufficient reason for advancing the broader, court-adopted construction in this IPR. Thus, we give the dynamic limitation its plain-and-ordinary meaning, which is “adjusting during operation based—at least in part—on information gained during operation.”” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Variable Bandpass Filter Block does not teach the recited “component” or “impedance” that is dynamically adjusted, and instead focus on why the low-pass and high-pass filter circuits do not teach the limitation, which is not Petitioner’s position. As stated above, we agree with Patent Owner’s plain reading of the claim language – i.e., that it “requires adjusting a variable impedance of a circuit or component thereof, while it is in the signal path.” See PO Resp. 49. However, Patent Owner’s reading of the claim does not persuasively address why the Variable Bandpass Filter Block does not teach the recited “circuit” or “component.” We have reviewed Dr. Larson’s cited testimony and disagree with Patent Owner that he provided “a well-supported opinion . . . as to why a [person of ordinary skill in the art] would not understand the entire bandpass box to be “a component,” “a circuit,” or “an impedance” in the claims.” Sur-reply 4 (citing Ex. 2020 ¶¶ 46–48, 71, 74–83). Dr. Larson testifies that the ’330 patent “teach[es] these adjustments [that dynamically change operating parameters] as changes effected in a single circuit block.” Ex. 2020 ¶ 46 (citing, e.g., Ex. 1001, Figs. 8A, 9A, 8:20–25, 8:36–39, 9:36–59, 10:1–18 (emphasis added)). Dr. Larson does not provide further explanation as to what he means by a “single circuit block,” but relies on Figures 8A and 9A, which show a “function block,” and other disclosures referring to a “function block.” Id. There is no dispute that the recited “circuit” or “component” in the receiver signal path is referring to these “function blocks.” See Tr. 22:20–23:4. The ’330 patent states that Figure 8A, which includes function block 820, is “an embodiment of the present invention” that describes a “possible power saving technique[].” Ex. 1001, 3:30–33, 8:20–25. Similarly, Figure 9A, which includes function block 920, “illustrate[s] one of the possible power saving techniques.” Id. at 3:33–34. The ’330 patent describes that “[f]unctional block 820 . . . may be a filter, mixer, amplifier, or other circuit or circuits in a wireless transceiver or other electronic circuits or system.” Ex. 1001, 8:22–25 (emphasis added). Based on these disclosures, we are not convinced that Function Block 820 or 920 cannot include multiple filters in a Variable Bandpass Filter Block, or that Behbahani’s Variable Bandpass Filter Block does not teach the recited “circuit,” “component,” or “impedance.”” slip op. at 42
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“The absence of meaningful disclosure of the implementation details of the circuit in the ’330 patent suggests that the circuit implementation details Patent Owner argues about now would have been within the understanding of a person of ordinary skill in the art. That is, Patent Owner did not provide in its own specification “the type of detail [it] now argues is necessary in prior art references,” which permits a “finding that one skilled in the art would have known how to implement the features of the references and would have concluded that the reference disclosures would have been enabling.” In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994). When a patent specification does not “specifically describe[]” any “equipment or techniques to be used,” it may be deduced “that all of the equipment and technical knowledge required to perform the claimed method” is known to one of ordinary skill in the art. In re Fox, 471 F.2d 1405, 1407 (CCPA 1973); see also Southwire Co. v. Cerro Wire LLC, 870 F.3d 1306, 1312 (Fed. Cir. 2017) (without proof to the contrary, when there is no focus on a disputed claim limitation in the specification, the limitation is merely “an observed result of an old process”). To that end, Petitioner provides persuasive testimony from Dr. Abidi that signal strength measurement circuits were known in the art, and that a person of ordinary skill in the art would have understood how to implement a known technique for measuring signal strength, which is not disputed by Patent Owner. Ex. 1003 ¶¶ 180– 181; Ex. 1042 ¶¶ 12–16; see Pet. Reply 24–26; Pet. 60–62. Accordingly, we agree with Petitioner that Behbahani’s disclosure at least suggests circuitry for performing such a determination of signal strength. See Pet. Reply 24 (citing Pet. 60–61; Ex. 1003 ¶¶ 92–98, 179–181). Petitioner further argues that Tan “provides an example of circuitry used to detect signals at various points in the low-pass filter signal path as a means of implementing a prefilter automatic gain control.” Pet. 60–61 (citing Ex. 1006, 481); Ex. 1003 ¶ 180. The example in Tan is a peak detector circuit. Pet. 61; Ex. 1003 ¶ 180; Ex. 1006, Fig. 8. Dr. Abidi testifies that a person of ordinary skill in the art would have been motivated to use Tan’s signal strength measurement circuitry to measure nodes AI and AO. Ex. 1003 ¶ 180. In response to Patent Owner’s argument that Petitioner does not sufficiently explain how to use Tan’s peak detector in Behbahani (PO Resp. 70), Dr. Abidi provides testimony explaining how Tan’s peak detector circuit provides a measure of the signal strength, which we find persuasive, and is unrebutted by Patent Owner. Ex. 1042 ¶ 15.” slip op. at 30
Patent outcomesUS 7,010,330 unpatentableClaim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,010,330 - Apple Inc. v. Theta IP, LLCAll claims unpatentablePTAB · Nov 24, 2025 · IPR2024-00817 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 1–8 are unpatentable as obvious over Behbahani, Leete, and Tan; Patent Owner’s motion to strike is denied.
RulingsFinal written decision- Strike new argumentNew argument consideredDenied
“Pursuant to 37 C.F.R. § 42.23(b), a reply “may only respond to arguments raised in the corresponding . . . patent owner response.” We agree with Petitioner, for the reasons stated in the Opposition, that the arguments and declaration testimony is responsive to arguments raised in the Patent Owner Response. See Opp Mot. 7–11 (explaining the positions taken in the Petition, Patent Owner’s arguments in Response, and the arguments presented in Reply); Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1008– 1009 (Fed. Cir. 2023). Petitioner does not provide a new theory of unpatentability; rather, Petitioner responds and elaborates on the theory presented in the Petition to explain why Patent Owner’s arguments are incorrect. E.g., Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F.3d 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1081–82 (Fed. Cir. 2015) (reasoning that rebuttal evidence should be responsive such that it is offered “to explain, repel, counteract, or disprove the evidence of the adverse party”). “[T]he introduction of new evidence in the course of the trial is to be expected in [IPR] trial proceedings” and permissible “as long as the opposing party is given notice of the evidence and an opportunity to respond to it.” Genzyme Therapeutic Prods. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366 (Fed. Cir. 2016).” slip op. at 12
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner thus proposes a Master’s degree with two years of experience, while Patent Owner proposes a Bachelor’s degree with five years of experience. At the institution stage, we did not see a material difference in the proposals given that both parties also indicate that more education could substitute for less experience and vice versa, and thus adopted Patent Owner’s proposal. Inst. Dec. 11. We requested that the parties address during trial if either believed that the choice of one proposal over the other would make a difference in the patentability analysis. Id. Neither party has done so. Accordingly, because nothing in the record persuades us that our preliminary finding in the Institution Decision was incorrect, and because neither party has challenged our finding, we maintain our adoption of Patent Owner’s proposed level of ordinary skill in the art.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Thus, the parties do not dispute the meaning of “signal path,” and we adopt the district court’s construction of plain and ordinary meaning, as agreed by the parties. See PO Resp. 40–41; Pet. 9; Ex. 2025, 14. The dispute concerns the application of this and the surrounding claim language (i.e., “in the receiver signal path”) to the disclosures in Behbahani. See PO Resp. 40–42. Therefore, we will provide further discussion in the context of the parties’ arguments regarding Behbahani below. However, we agree with Patent Owner’s plain reading of the claim language in limitation 1(e) and the corresponding limitations in independent claims 3, 5, 7, and 8 – i.e., that “[t]he plain language requires adjusting a bias current, or a bias current and an impedance, in a circuit, while it is in the signal path.” See PO Resp. 48. We determine that it is not necessary to provide an express interpretation of any other claim terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 20
- Settled expectationsNot reached
“Owner’s] settled expectations in long-standing patent rights, and Office policies and efficiency.” Id.; see id. at 25–26. Patent Owner’s arguments essentially reassert the arguments made in the Preliminary Response that inter partes review should be discretionarily denied under 35 U.S.C. § 314(a) and 35 U.S.C. § 325(d). In the Institution Decision, we were not persuaded by these arguments. Inst. Dec. 15–22. Patent Owner argues that in Ecto World, LLC v. RAI Strategic Holdings, Inc., IPR2024-01280, Paper 13 (PTAB May 19, 2025) (§ A precedential) supports denial under 35 U.S.C. § 325(d). Sur-reply 25. However, Ecto World was designated precedential on May 19, 2025, and our Standard Operating Procedure 2 provides that “[a] precedential decision is binding Board authority in subsequent matters involving similar facts or issues.” SOP2, 7 (emphasis added). Therefore, re-evaluation under Ecto World does not appear to be appropriate under the circumstances here. Patent Owner also argues that proceedings can be properly dismissed post-institution in the Director’s discretion. Sur-reply 26. In support, Patent Owner cites to Hulu LLV v. Piranha Media Distribution, LLC, IPR2024- 01252, Paper 17, at 3 (PTAB April 17, 2025). Id. However, in Hulu, the patent owner timely sought Director Review after the institution decision, and upon Director Review, the institution decision was vacated and denied. IPR2024-01252, Papers 16, 19, 27. By contrast, here, Patent Owner raised this issue for the first time in the Sur-reply (filed August 5, 2025, nearly three months after Ecto World was designated precedential), approximately three weeks prior to oral argument. Patent Owner also did not file a motion to terminate the proceeding. Although we recognize that “that the Board has the inherent authority to reconsider institution decisions (beyond the regulatory time for a patentee’s entitlement to seek reconsideration),” Sling TV, L.L.C. v. Realtime Adaptive Streaming LLC, 840 F. App’x 598, 598–99 (Fed. Cir. 2021), we decline to do so at this late stage in the proceeding.” slip op. at 63
Patent outcomesUS 10,129,825 unpatentableClaim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,129,825 - Apple Inc. v. Theta IP, LLCNo claims unpatentablePTAB · Nov 24, 2025 · IPR2024-00818 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 1, 2, and 4–23 were not shown unpatentable over Behbahani, Leete, and Tan because the combination did not teach comparing desired and interferer signal strengths.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Behbahani teaches “comparing the strength of the desired signal to the strength of the interfere signal,” as recited in limitation 1(a). See PO Resp. 68–69; Sur-reply 21–23. Although Petitioner argues that Behbahani “expressly teaches comparing the desired and interferer signal strengths,” Petitioner does not cite to sufficient evidence in support of this statement. Pet. 38. The basis of Petitioner’s argument is that Behbahani teaches the same process for determining signal strengths as shown in Figure 4 of the ’202 patent. Figure 4 of the ’202 patent is reproduced below: Figure 4 shows, among other things, signal strength indicator circuits 440 and 450 connected to input line 410 and output line 460, on either side of gain element 420 and filter 430. Ex. 1001, 6:53–57. The input signal on input line 410 is shown as desired signal 412 and interferers 464 and 466. Id. at 59–61. Figure 4 is further described as follows. The signal strength indicators 440 and 450 do not provide information as to the relative sizes of the desired and interfering signals. Rather, a cumulative signal level is provided at their outputs. For example, the first signal strength indicator 440 outputs a level corresponding to the sum of desired signal 412 and interfering signals 414 and 416, while the second signal strength indicator 450 provides a signal level corresponding to the sum of desired signal 462 and interfering signals 464 and 466. In this specific example, the gain of the gain and filter circuit combinations is shown as approximately one, while the interfering signals 414 and 416 signal levels are reduced. A comparison of the signal levels provided by the signal strength indicators 440 and 450 indicates that much of the combined received signal on line 410 has been filtered. Accordingly, it may be deduced that large interfering signals present at the input are being filtered by the filter 430. From this information, as will be shown in greater detail below, the bias, impedance, and gain of the gain stage 420 and filter 430 combination may be optimized to reduce power dissipation. Ex. 1001, 6:61–7:13 (emphasis added). In other words, Figure 4 shows a comparison of a sum of the desired and interferer signals output from the strength indicator circuits, not a comparison of the strength of the desired signal and the strength of the interferer signal, as required by the claim language. See Sur-reply 22–23. The ’202 patent describes Figure 4 as “an embodiment,” and claims are not limited to specific embodiments described in the specification. See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc). Petitioner even admits that Figure 4 “compar[es] a cumulative signal strength at a first node to a cumulative signal strength at a second node.” Pet. 36 (emphasis added). In the Reply, Petitioner argues that Patent Owner “ignores the” slip op. at 33
- Strike new argumentNew argument consideredDenied
“Pursuant to 37 C.F.R. § 42.23(b), a reply “may only respond to arguments raised in the corresponding . . . patent owner response.” We agree with Petitioner, for the reasons stated in the Opposition, that the arguments in the Reply and Reply declaration testimony are responsive to arguments raised in the Patent Owner Response. See Opp Mot. 7–12 (explaining the positions taken in the Petition, Patent Owner’s arguments in Response, and the arguments presented in Reply); see Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1008–1009 (Fed. Cir. 2023). Petitioner does not provide a new theory of unpatentability; rather, Petitioner responds and elaborates on the theory presented in the Petition to explain why Patent Owner’s arguments are incorrect. E.g., Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F.3d 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1081–82 (Fed. Cir. 2015) (reasoning that rebuttal evidence should be responsive such that it is offered “to explain, repel, counteract, or disprove the evidence of the adverse party”). “[T]he introduction of new evidence in the course of the trial is to be expected in [IPR] trial proceedings” and permissible “as long as the opposing party is given notice of the evidence and an opportunity to respond to it.” Genzyme Therapeutic Prods. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366 (Fed. Cir. 2016). We also note that our Consolidated Trial Practice Guide (“CTPG”) states that In most cases, the Board is capable of identifying new issues or belatedly presented evidence when weighing the evidence at the close of trial, and disregarding any new issues or belatedly presented evidence that exceeds the proper scope of reply or sur-reply. As such, striking the entirety or a portion of a party's brief is an exceptional remedy that the Board expects will be granted rarely. CTPG at 80, 84 Fed. Reg. 64,280 (Nov. 21, 2019). We follow that guidance here. Further, Patent Owner argues that Dr. Abidi’s testimony as a co- author of Behbahani is “self-serving and unsupported.” Mot. 6–7. The fact that Dr. Abidi is a co-author of Behbahani, as well as Petitioner’s expert, is not, in and of itself, sufficient to discredit Dr. Abidi’s testimony. The CTPG provides that “[t]he Board has broad discretion to assign weight to be accorded expert testimony.” CTPG 35. We are capable of discerning from the testimony and the evidence presented whether Dr. Abidi’s testimony should be entitled to any weight, either as a whole or with regard to specific issues. We will weigh the testimony on an issue-by-issue basis as appropriate. Moreover, to the extent that Patent Owner has pointed out the inadequacies of Dr. Abidi’s testimony, we are also capable of noting those inadequacies and weighing that testimony accordingly. For the foregoing reasons, Patent Owner’s motion to strike is denied.” slip op. at 11
- Expert testimonyPetitioner expert discountedOther
“We also disagree with Petitioner that “Dr. Abidi provided well- reasoned analysis that Behbahani teaches determining and comparing desired and interferer signal strengths.” Reply 27 (citing Ex. 1003 ¶¶ 179– 181). We have reviewed the Dr. Abidi’s testimony cited in the Petition and Reply for limitation 1(a) (Ex. 1003 ¶¶ 95, 96, 113–120, 179–181; Ex. 1042 ¶¶ 12–16), and we disagree that Dr. Abidi provided well-reasoned analysis that Behbahani teaches comparing desired signal strengths with interferer signal strengths. Rather, Dr. Abidi’s testimony focuses on determining or measuring desired and interferer signal strengths, generally simply repeats what is in the Petition, and only provides a conclusory assertion that Behbahani expressly teaches comparing the strengths of the desired and interferer signals without providing any explanation. See TQ Delta, LLC v. Cisco Sys., Inc., 942 F.3d 1352, 1358–59 (Fed. Cir. 2019) (“Conclusory expert testimony does not qualify as substantial evidence.”). Accordingly, Dr. Abidi’s supporting testimony is also deficient. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). As Patent Owner points out, the only comparison mentioned by Petitioner in Behbahani is to derive the strength of the interferer signal. Sur-reply 22 (citing Pet. 38–39); Ex. 1004, 1207 (“[B]y comparing the signal level at the input and the output of the digital filter (DI and DO), the relative strength of the out-of-channel signal that passes through the analog filter is calculated”). Accordingly, for the foregoing reasons we determine that Petitioner has not shown that Behbahani teaches limitation 1(a).” slip op. at 36
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner thus proposes a Master’s degree with two years of experience, while Patent Owner proposes a Bachelor’s degree with five years of experience. At the institution stage, we did not see a material difference in the proposals given that both parties also indicate that more education could substitute for less experience and vice versa, and thus adopted Patent Owner’s proposal. Inst. Dec. 11. We requested that the parties address during trial if either believed that the choice of one proposal over the other would make a difference in the patentability analysis. Id. Neither party has done so. Accordingly, because nothing in the record persuades us that our preliminary finding in the Institution Decision was incorrect, and because neither party has challenged our finding, we maintain our adoption of Patent Owner’s proposed level of ordinary skill in the art.” slip op. at 14
Patent outcomesUS 10,524,202 not shown unpatentableClaim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,524,202 - PTAB · Nov 3, 2025 · IPR2025-00934 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on claims 1–9 and all asserted grounds, finding a reasonable likelihood that claims 1–9 are obvious over Bharadwaj and Sun.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. Paper 11. The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that 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.” After considering the Petition and the Preliminary Response, as well as the evidence of record, we institute an inter partes review as to claims 1–9 of the ’210 patent.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedNot reached
“We are aware, however, that we must not confuse access with accessibility. See Samsung Elecs. Co. v. Infobridge Pte. Ltd., 929 F.3d 1363, 1374 (Fed. Cir. 2019) (“[A] petitioner need not establish that specific persons actually accessed or received a work to show that the work was publicly accessible.”). Dr. Hansen notes that the cover of 802.11ax_D1.0 grants permission to reproduce the document to others for consideration. Ex. 1026 ¶ 72; see Ex. 1004, 1 (“Permission is hereby granted for IEEE Standards Committee participants to reproduce this document for purposes of international standardization consideration.”). Dr. Hansen also testifies that meetings to discuss 802.11ax_D1.0 were open to the public. Ex. 1026 ¶ 58 (citing Appendix J to declaration). Thus, it appears, on the current record, that the purpose of 802.11ax_D1.0 was to promote dialogue with interested artisans, which indicates public accessibility. See Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364, 1374 (Fed. Cir. 2021) (“We have previously held that where a publication’s purpose is ‘dialogue with the intended audience,’ that purpose indicates public accessibility.” (citation omitted)). After having reviewed all the arguments and evidence presented by the parties, we would like to see further development of this issue during trial. The current record is not well-developed on this issue either factually or legally. With regard to the factual record, Patent Owner has not yet had the opportunity to depose Dr. Hansen or been given a full opportunity to marshal its own evidence on this issue. With regard to the law, we would like to see the parties apply the relevant case law to the developed facts as to the public accessibility and prior art status of 802.11ax_D1.0. We will determine, if necessary and appropriate, whether 802.11ax_D1.0 is prior art to the challenged claims of the ’210 patent based on the full record as developed during trial.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“As an initial matter, Bharadwaj and Sun are both analogous art to the ’210 Patent in that that they are both concerned with the design of the PHY data unit for supporting MU-MIMO transmissions in the downlink. SAMSUNG-1003, ¶¶153- 158. . . . In addition, both Bharadwaj and Sun describe MU- MIMO downlink PHY data unit structures in the context of 802.11ax. SAMSUNG-1013, ¶[0064]; SAMSUNG-1015, ¶[0031]; SAMSUNG-1003, ¶¶153-158. . . . . [A] POSITA implementing Bharadwaj’s preamble designs would have been motivated to look to another reference, like Sun, for an understanding of the format of the user field that would support non-MU-MIMO allocations and the single-user transmission scenario. A POSITA would have combined the teachings of Bharadwaj with Sun to realize implementation details for the HE-SIG-A and HE-SIG-B fields of the HE MU PPDU to better support both MU-MIMO and non-MU-MIMO allocations. SAMSUNG-1003, ¶¶153-158. . . . . A POSITA would have found it obvious to look to Sun for modifying Bharadwaj to include the user field format for SU (non-MU-MIMO) allocation to complement Bharadwaj’s disclosure of the MU-MIMO user field format and to provide a more complete system that would allow HE MU PPDUs to support both MU-MIMO allocations for multiple users and non-MU-MIMO allocations for a single user. SAMSUNG- 1003, ¶¶153-158. The combination also would have been obvious and predictable for at least the following reasons: 1) both Bharadwaj and Sun describe designs for a PHY data unit (or PPDU) to support communications between an AP and a station within a high-efficiency Wi-Fi network, consistent with 802.11ax; 2) both Bharadwaj and Sun describe the PPDU design for supporting MU-MIMO downlink transmission as including HE- SIG-A and HE-SIG-B fields; and 3) Bharadwaj already describes the format for the user field for the MU-MIMO allocation, while also recognizing the single-user scenario, and the combination merely involves the addition to Bharadwaj of the user field format for the single-user allocation, as taught by Sun. SAMSUNG-1003, ¶¶153- 158. The combination is obvious also because elements of the combined system would each perform similar functions they had been known to perform in similar contexts outside the combination. SAMSUNG-1003, ¶¶153-158. . . . . A POSITA would have reasonably expected success implementing the combination, especially considering the substantially similar 802.11ax techniques described in each reference. SAMSUNG-1003, ¶¶153-158. Additionally, combining the teachings of Bharadwaj with Sun would have merely involved combining prior art elements according to known methods to yield predictable results. SAMSUNG-1003, ¶¶153-158.” slip op. at 31
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner asserts that “no formal claim constructions are necessary.” Pet. 2. Patent Owner notes that “both parties have submitted terms for construction in the district court for this Patent” (Prelim. Resp. 6), but that “for purposes of [the] Preliminary Response, Patent Owner applies the plain and ordinary meaning of the challenged claims” (id. at 8). Accordingly, at this stage, no need exists to expressly construe any claim terms to resolve the parties’ disputes.9 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,159,210 - Tesla, Inc. v. The United States Of America As Represented By The Secretary Of The Navy (Intellectual Ventures II LLC)Institution deniedPTAB · Jul 24, 2025 · IPR2025-00341 · APJ Aaron W Moore · IPR · Institution
The Board denied institution because Tesla had not shown a reasonable likelihood that claims 10, 11, 14, 16, and 18 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Having considered the Petition, the Preliminary Response, the Reply, and the Sur-reply, as well as the evidence of record, we conclude that Petitioner has not shown a reasonable likelihood that it will prevail in establishing the unpatentability of claims 10, 11, 14, 16, and 18 of the ’743 patent. We accordingly do not institute inter partes review. A.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art would have “been someone knowledgeable and familiar with the areas of networking and distributed computing that are pertinent to the ’743 patent,” would “have a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent training, and approximately 2-3 years of professional experience relating to distributed computing,” and that a “[l]ack of professional experience can be remedied by additional education, and vice versa.” Pet. 17 (citing Ex.1003, ¶¶ 32-34). Patent Owner does not address this issue in the Preliminary Response. As Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art, we adopt it for purposes of this analysis. B.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“of “event,” in which Petitioner argued that the term should be broad enough to include “processing radar sensor data, performing radar tracking initialization and refinement, and distributing radar tracking information to other modules,” and Patent Owner argued that the specification uses the term as “as an umbrella term to cover various types of ‘internal event and performance data’ such as ‘application statuses, states, performance, and internally detected errors.’” Reply 1; Sur-reply 2. We agree with Patent Owner that that claimed “events” must concern “application statuses, states, performance, and internally detected errors.” See Ex. 1001, 7:44–45. The patent explains that function group 2 collects that type of information from applications using an API and then “correlate[es], combin[es], and reformat[s] [the] application data into higherlevel metrics (composite events) for use by displays or other Resource Management components.” Id. at 7:52–54. The middleware described and claimed in the ’743 is concerned with how applications are performing, not what they doing.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“This claim limitation, however, also requires “event correlation capabilities.” For that, Petitioner asserts that “Welch’s metrics calculation component (part of the ‘second function group’) provides ‘event correlation capabilities’ because the QoS management software “implementation includes the following capabilities: . . . (2) track correlation and filtering algorithms.” Pet. 44–45 (citing Ex. 1003, 4). This, we find, mischaracterizes Welch’s disclosure, because Welch’s metrics calculation component does not perform the identified “correlation.” The language quoted by Petitioner comes from the experimental results section of Welch, which describes how the implementation of the NSWC HiPer-D testbed, the system that was used test Welch’s QoS middleware, included “track correlation and filtering algorithms.” Ex. 1005, 4. Welch is not explaining that the middleware correlates the QoS system level events that Petitioner has identified as the claimed “events,” but, instead, that the NSWC HiPer-D system that was used to test the middleware included the ability to correlate radar data in a shipboard anti-air-warfare system.6 The correlating mentioned in Welch occurs at the application level, not in the middleware.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,181,743 - PTAB · Jun 26, 2025 · IPR2025-00217 · APJ Jason W Melvin · IPR · Institution
The Board instituted inter partes review of claims 1–5, 10–15, and 20 on all four asserted § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we institute review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS 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, and we adopt it here.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties’ dispute on this issue turns on claim construction. Petitioner’s approach requires we read “accumulation” as updating transmission power for each received TPC command. That is consistent with some aspects of the ’153 patent’s description. See Ex. 1001, 9:29–42 (“[S]tep is the magnitude of the amount added to an accumulator upon receipt of each TPC command. . . . [T]he transmit power PTx(k) may be updated each time a new TPC command is received.”). Patent Owner’s approach requires only that TPC commands cumulatively affect transmission power. That also appears consistent with the ’153 patent’s description. See id. at 9:35–36 (“The transmit power PTx(k) may be updated for every frame period.”). Based on those disclosures, it appears that the Specification supports Patent Owner’s broader construction. We need not resolve the “accumulation” claim-construction dispute at this stage, because Petitioner’s Zeira-based ground justifies institution, as discussed below. The parties should address the proper construction for “TPC command accumulation” in the instituted trial.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We do not agree with Patent Owner that the present record shows Andersson’s and Khan’s approaches couldn’t or wouldn’t be combined in the manner Petitioner asserts. Although shared-channel applications may have motivated Khan’s approach, it seems that scheduling grants applicable to a particular UE could be transmitted to that UE along with Andersson’s TPC commands. Thus, Patent Owner does not undermine Petitioner’s prior-art combination on the present record. The additional record developed through trial may ultimately support Patent Owner on this point, but at present, this argument does not justify denial of institution. Patent Owner additionally takes issue with Petitioner’s asserted benefits such as “allowing for a larger number of active wireless units,” reducing complexity, and reducing latency. Prelim. Resp. 38 (quoting Pet. 26–27). Those disputes raise potential factual issues that are best resolved through trial.” slip op. at 10
Claim construction§ 103 obviousnessPatents in suitUS 10,952,153 - PLR Worldwide Sales Limited v. Flip Phone Games, Inc.All claims unpatentablePTAB · Apr 24, 2025 · IPR2024-00171 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–14 are unpatentable as obvious over Hays; the Board did not reach the remaining grounds.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner, relying on the testimony of Dr. Zagal, argues that a person having ordinary skill in the art “would have had an undergraduate degree in game design or development, computer science, computer engineering, or a related field, with at least two years of experience working with computer gaming systems or software application development.” Pet. 2 (citing Ex. 1003 ¶¶ 62–66). Petitioner also contends that “[l]ess work experience may be compensated by a higher level of education or vice versa.” Pet. 2–3 (citing Ex. 1003 ¶¶ 62–66). Patent Owner, relying on the testimony of Dr. Akl, contends that a skilled artisan “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with one to two years of experience developing or programming video games or video game systems, or similar types of computer systems,” but notes that a skilled artisan “may have additional education that might substitute for some of the experience, and additional substantial experience might substitute for some of the educational background.” PO Resp. 2–3 (citing Ex. 2004 ¶ 28). According to Patent Owner, Petitioner’s proposal does not require Owner states, “[t]his difference does not materially affect the analysis presented below.” PO Resp. 3. We see very little difference between the parties’ respective proposals. We adopt Patent Owner’s more specific proposal because it is consistent with the level of skill evidenced in the ’958 patent and the applied prior art, but we agree with Patent Owner that this does not affect our analysis; we would reach the same conclusions under Petitioner’s proposal.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“requirements for the language “for use in a video game,” including that the updated video-game content be an interactive object that is inserted into an existing game, or at least a new ad unit not already present in the game, and that the updated content alter the function of the game. PO Resp. 15–17. Patent Owner offers no persuasive support for these restrictions on the claim language. The claim language itself suggests no such restrictions. Rather, the claim language simply recites video-game content that is for use in the video game. The claim language does not specify who or what must use the content or how it must be used. Thus, the claim language itself is broad and includes none of the restrictions Patent Owner would place on it.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Owner’s position to be that mere storage of content is not enough to show pre-selection of that content. For example, during oral argument, Patent Owner’s counsel argued as follows: I don’t think it’s just as simple as saying, well, anytime you store anything, it’s been pre-selected, because again, that kind of reads out pre-selection, as well. And the same thing with indexing. I think that’s simply too broad. There must be some pre-selection of, you know, kind of narrowed down content, if you will, but then when the request comes in, you choose among that pre-selected content for the final selection. Tr. 31:18–23; see also PO Resp. 11 (“[E]xtending the claim to content that is merely selected from storage and sent gives no meaning to pre-selected . . . .”), 12 (“[C]ontent is not shown to be pre-selected by selecting it from storage and sending.”); Tr. 31:2–5 (Patent Owner’s counsel’s argument that “there must be a pre-selection of certain content that will be available from which to select once the request is received, and then the checking step is performed in the various claims here”), 34:23–24 (Patent Owner’s counsel’s argument that “[t]here still must be a pre-selection, which we don’t think is simply, you know, the act of storing”). As explained below in Sections II.D.2.b and II.D.6, Petitioner’s contentions based on Hays show that Hays teaches pre-selected ads, as recited in claims 1 and 8, and a pre-selected message, as recited in claims 5 and 12, according to Patent Owner’s understanding of the term. Therefore, we apply Patent Owner’s interpretation in our patentability analysis, and we need not provide a full claim interpretation, nor do we need to resolve whether pre-selecting can be met by merely storing data. See Realtime” slip op. at 14
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b). Patent Owner argues that “Hays is only a ‘printed publication’ under § 311(b) as of the date it became available to the public—i.e., after the June 26, 2007, priority date of the ’958 Patent,” and, therefore, that Hays is “ineligible to be prior art in an IPR.” PO Resp. 48–50. The Federal Circuit has rejected this argument, holding that a published patent application is, by its literal terms, a “printed publication.” So, when § 311(b) permits IPR challenges based upon “prior art . . . printed publications,” it includes within its literal scope challenges based upon a published patent application—this specific type of “printed publication”—is deemed prior art as of its filing date. Therefore, the plain language of §§ 311(b) and 102(e)(1) permits IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date. Lynk Labs, Inc. v. Samsung Elecs. Co., 125 F.4th 1120, 1127 (Fed. Cir. 2025). Thus, Petitioner asserts a permissible ground of unpatentability under 35 U.S.C. § 311(b) by arguing that claims 1–14 are unpatentable under 35 U.S.C. § 103(a) on the basis of Hays, which is a prior art printed publication.” slip op. at 15
Patent outcomesUS 10,617,958 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,617,958 - Mercedes-Benz USA, LLC v. Yechezkal Evan SperoAll claims unpatentablePTAB · Dec 9, 2024 · IPR2023-01039 · APJ Jason W Melvin · IPR · Final written decision
Claims 8, 10–18, and 24–47 are unpatentable: Alden anticipates claims 24–27, 29–35, 37–43, and 45–47; the remaining claims are obvious over the stated combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“undergraduate degree in mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), effective March 16, 2013, amended the applicable statutes. Because the application from which the ’551 patent issued was filed before this date, the pre-AIA versions of §§ 102 and 103 apply. 4 US 2003/0137849 A1, filed Jan. 22, 2002 (Ex. 1005). 5 US 6,049,749, issued Apr. 11, 2000 (Ex. 1006). 6 US 2002/0057572 A1, published May 16, 2002 (Ex. 1007). 7 WO 2001/70538 A2, published Sept. 27, 2001 (Ex. 1008). similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems.” Pet. 9 (citing Ex. 1003 ¶ 33). Patent Owner does not dispute that level of ordinary skill in the art. PO Resp. 6. We adopt the undisputed level of ordinary skill in the art and refer to people with it as skilled artisans.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The problem with Patent Owner’s claim-construction position is that neither the dictionary definition nor the ’551 patent’s specification establish any degree of proof, verification, or confirmation that an object has been correctly identified. The specification discloses that “techniques known in the art” may be used “to classify, identify or locate the contents” visible to a camera sensor. Ex. 1001, 44:67–45:9. That does not establish any certainty obtained by the preexisting techniques. The specification states that the system can “illuminate distant overhead and roadside signs” and can use “[i]mage recognition via a camera” so that the illumination beam may “follow the retroreflective sign as the vehicle moves.” Id. at 51:59–67. That disclosure does not speak to any degree of confirmation or certainty. The specification’s other disclosures are no different. Id. at 52:19–27 (disclosing automated control over lighting and referencing “automatic dimming of high beam due to detection of oncoming vehicles”), 52:66–53:4 (“Using color and pattern recognition techniques it is possible to determine what is a sign.”), 63:9–12 (“Using real time image processing methodologies with image and scene recognition technology known in the art, room or outdoor area elements, objects and people are identified.”), 64:46–49 (“Using machine vision technology known in the art such as neural networks training and other pattern recognition techniques the vision system has sensor, algorithmic and computation means for identifying devices or objects.”), 69:54–57 (“In a preferred embodiment of the invention the logical controller 454 receiving image input from the camera 453 and running pattern recognition software will identify what is the visual task a person is trying to perform.”), 75:48–62 (“Using programmed scene recognition algorithms, the luminaire’s computer vision system comprised of the camera sensor 496 and logical controller 494 identifies the food on the plate, looks-up in storage the recommended CCT and powers each of the different colored LED chips aimed thereon at the correct power level in order to provide the optimal color illumination.”), 76:33–39 (“[A] camera vision system has algorithmic means to identify and track the position of people and objects and the logical controller has motion control means for re-aiming the light sources towards targeted elements and changing the power level to the LED chips.”). None of those disclosures addresses a requirement for confirming or verifying an identification that the system makes; nor does any address a particular accuracy requirement in identifying an object. Based on the specification using “identify” without any requirement that identifying an object requires confirmation or verification of the object’s true identify, we do not adopt Patent Owner’s proposed construction. Although the construction itself similarly does not expressly require the confirmation or verification that Patent Owner seeks to impose, we understand that to be Patent Owner’s intent, and accordingly do not adopt the proposed construction. The parties dispute no other aspect of “identify,” and we therefore need not expressly construe the term.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Because Alden describes its segmented headlights as implementing a process using two-dimensional signals for two-dimensional dimming functionality, we find that Figure 5 depicts a section of an embodiment that contains more than a single row of lighting elements. Stated otherwise, Alden’s disclosures are consistent with each other and are directed to a two-dimensional approach to sensing, control, and illumination. Further, we agree with Petitioner that Patent Owner has not addressed the legal standard for lack of enablement. Pet. Reply 2. In particular, to overcome the presumption that prior-art disclosures are enabled, Patent Owner must show ordinarily skilled artisans would require undue experimentation to practice the disclosed invention. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F. 3d 1313, 1354–55 (Fed. Cir. 2003); In re Antor Media Corp., 689 F. 3d 1282, 1287– 88 (Fed. Cir. 2012). We do not agree with Patent Owner that Alden lacks a presumption of enablement (see PO Surreply 7–8), because we determine that Petitioner’s contentions rely on Alden’s disclosures regarding its invention as a whole. Other than arguing that Figure 5 discloses a single-row embodiment that is unusable with Alden’s other disclosures, Patent Owner has made no attempt to show Alden lacks enablement. Patent Owner has not addressed what experimentation skilled artisans would require to practice an invention using Alden’s Figure 5 segmented headlight with the remainder of Alden’s system as disclosed in Figures 2, 3, and 4, and Alden’s corresponding textual description. We therefore determine that Patent Owner has not shown Alden to lack enablement for its disclosed invention.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Petitioner asserts that skilled artisans would have had reason to incorporate Kobayashi’s teachings that its controller receives “road map information” from a “road profile calculating means” and uses it to adjust the headlamp’s illumination. Pet. 63–64. Petitioner reasons that it would be obvious to “apply these teachings to Alden to use map data to identify road curvature when adapting the LEDs of Alden to ‘direct light into the corner.’” Id. at 64 (citing Ex. 1003 ¶ 122). And Petitioner asserts that skilled artisans had reason to do so because it would “maximize successful detection in different environments” such as where the road lack reflectors. Id. at 65 (citing Ex. 1003 ¶ 123). Other than as discussed above regarding Alden’s disclosures, Patent Owner does not contest Petitioner’s showing for claims 28, 36, and 44. We have considered the full record, including evidence and arguments presented by Petitioner and Patent Owner on whether the combination of Alden and Kobayashi discloses each limitation of claims 28, 36, and 44, and whether skilled artisans would have had reason to combine the references’ teachings as asserted. Based on the full record, we conclude that Petitioner has proven that claims 28, 36, and 44 would have been obvious over Alden and Kobayashi. Pet. 62–65.” slip op. at 34
Patent outcomesUS 9,955,551 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,955,551
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