• Uatp IP LLC v. Slick Slide LLCSome claims unpatentable
  PTAB · Oct 2, 2026 · PGR2024-00054 · APJ Brian D Range · PGR · Final written decision

  Claims 22–26 are unpatentable based on obviousness; claims 1–17, 27, and 28 were not shown unpatentable. Patent Owner’s motion to terminate was denied.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “1. Mesh Layer Petitioner contends “no formal claim construction is necessary in this” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “5. Analysis On this complete record, we determine that Petitioner’s arguments do” slip op. at 31

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “form of nylon and some form of Teflon (and possible combinations thereof) having the specific coefficient of friction range given in limitation [1c] breaks down, because the building blocks of the obviousness argument are not sufficiently identified in Phillips alone, nor in the supporting testimony. Accordingly, we determine that Petitioner’s arguments and evidence fail to show that Phillips renders the challenged claims obvious. 6. Conclusion Based on the foregoing, we determine that Petitioner has not established by a preponderance of the evidence that claims 1–4, 6, and 7 would have been anticipated by or obvious in view of Phillips.” slip op. at 33

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “2. Products and Nexus We first consider the issue of whether certain evidence relied upon by” slip op. at 20

  Patent outcomesUS 11,998,854 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Graham · Nautilus
  Patents in suitUS 11,998,854
• Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, Inc.No claims unpatentable
  PTAB · Dec 10, 2025 · IPR2024-01186 · APJ Brian D Range · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because Kwatra does not teach or suggest minimizing rotational velocity and acceleration as required by the claims.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art (POSITA) would have the following characteristics: “a bachelor’s degree in engineering or computer science, or equivalent field, and two years of experience working on image or video processing or digital cameras.” Pet. 6 (citing Ex. 1002 ¶¶ 36–37). Petitioner states that, “[a]lternatively, a POSITA would have four years of experience working on image or video processing 6 Patent Owner asserts objective evidence of nonobviousness. Prelim. Resp. 19–27. or digital cameras.” Id. Petitioner further contends “[a]n advanced graduate degree in the disciplines cited above may make up for the work experience indicated above.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim Resp. 14–15. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’894 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Petitioner “does not believe any terms require a formal construction.” Pet. 6. Patent Owner agrees “no claim terms presently require construction to resolve any current dispute between the parties.” PO Resp. 15. We do not discern a need to construe explicitly any claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Kwatra teaches, at Equation 7, minimizing velocity and acceleration of a function representing camera path (P). FF ¶¶ 6, 8–9. Kwatra does not state that this camera path function considers rotation. Rather, the words “camera path” suggest x, y, z movement of the camera rather than rotation of the camera. Dr. Foroosh’s testimony that Kwatra’s minimization of a smoothed camera path does not result in minimizing rotational velocity and acceleration is credible because this testimony is consistent with Kwatra as a whole and consistent with the other evidence of record. Id. ¶ 10. Kwatra recognizes that image rotation angle (“θ”) may not remain smooth. Id. ¶ 12. But rather than attempting to minimize velocity and acceleration of rotation of the camera housing, Kwatra states that applying a smoothness constraint on rotation angle “may be non-linear.” Id. ¶ 13. Consistent with Kwatra, Dr. Foroosh credibly explains the difficulty of applying linear techniques to rotation. Id. Thus, Kwatra proposes instead constraining the sine and cosine of theta. Id. ¶ 14. The Kwatra provisional application is part of the Kwatra reference (id. ¶ 15), and it similarly opts for simpler schemes rather than estimating all parameters for all frames jointly. Id. ¶ 16. The provisional explains that the rotational component is relatively small such that non-linear computations minimizing velocity and rotation can be avoided. Id. ¶¶ 17–18. The testimony of Patent Owner’s witness, Dr. Foroosh, explaining the provisional is credible (Ex. 2018 ¶ 72) because it is consistent with Kwatra’s complete disclosure. Dr. Foroosh’s testimony is more credible than the testimony of Petitioner’s witness, Dr. Katsaggelos, because Dr. Katsaggelos did not review the Kwatra provisional application and, thus, did not review the entire disclosure of Kwatra. Id. ¶ 19; see also In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (obviousness analysis considers whether “the claimed inventions are rendered obvious by the teachings of the prior art as a whole” (emphasis added)).” slip op. at 28

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “(id. ¶ 15), and it similarly opts for simpler schemes rather than estimating all parameters for all frames jointly. Id. ¶ 16. The provisional explains that the rotational component is relatively small such that non-linear computations minimizing velocity and rotation can be avoided. Id. ¶¶ 17–18. The testimony of Patent Owner’s witness, Dr. Foroosh, explaining the provisional is credible (Ex. 2018 ¶ 72) because it is consistent with Kwatra’s complete disclosure. Dr. Foroosh’s testimony is more credible than the testimony of Petitioner’s witness, Dr. Katsaggelos, because Dr. Katsaggelos did not review the Kwatra provisional application and, thus, did not review the entire disclosure of Kwatra. Id. ¶ 19; see also In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (obviousness analysis considers whether “the claimed inventions are rendered obvious by the teachings of the prior art as a whole” (emphasis added)).” slip op. at 28

  Patent outcomesUS 10,574,894 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,574,894
• Google LLC v. Eyesmatch Ltd.Some claims unpatentable
  PTAB · Nov 21, 2025 · IPR2025-00296 · APJ Neil T Powell · IPR · Final written decision

  Claims 1–18 are unpatentable: claims 1–6 and 10–12 over Rosenberg and Park, and claims 3, 4, 7–9, and 11–18 over Rosenberg, Park, and Geisner.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “December 18, 2012, would have a bachelor’s degree in electrical or computer engineering, or a closely related field such as computer science, and two years of work experience with image capture and processing systems or related fields.” Pet. 7 (citing Karam Decl. ¶ 91). Petitioner adds that “[a] person with less and/or different education, but more relevant practical experience, or vice versa, may also meet this standard.” Id. According to Petitioner, [t]he prior art also evidences such level of skill.” Id. Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Response.” PO Resp. 9 (citing Forsyth Decl. ¶¶ 53–54). For this Decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.10” slip op. at 9

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Turning to the substantive issues, we find the District Court’s “mirror tracking mode” construction to be well-reasoned and supported by the record, and we therefore adopt that construction and its reasoning. As the District Court points out, both the “double the distance” and “same size” aspects of its construction are expressly discussed in the ’109 patent, which is incorporated in the ’110 patent. See Ex. 2008, 16 (citing Ex. 1021, 2:5–27, Figs. 5A, 5B), 40 (citing “same reasons set forth regarding the term ‘it appears to mimic a reflection of a mirror’” in support of construction of “mirror tracking mode”). So, too, is “flipping” or reversing of the image disclosed. Id. at 17 (citing Ex. 1021, 14:46–51, 15:41–47), 40.” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Post-institution, Patent Owner invites us to construe limitation 1[f]’s recitation of “mirror tracking mode” and limitation 1[c]’s recitation of “adaptive transformation mapping.” PO Resp. 9–14. Regarding the latter, Patent Owner explains that “[i]n the District Court Litigation, ‘adaptive transformation mapping’ was construed as ‘continuously variable transformation mapping’ and ‘transformation mapping’ was construed as a ‘selected set of image transformations.’” Id. at 14 (citing Ex. 2008, 14, 37; Ex. 2013 ¶¶ 25, 27). Patent Owner does not, however, identify any way that those claim constructions affect our analysis of the parties’ patentability disputes. We find it unnecessary in resolving the parties’ patentability disputes to construe expressly limitation 1[c]’s recitation of “adaptive transformation mapping.”” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “persuasively address limitation 1[f]’s “mirror tracking mode.” In particular, Petitioner does not address persuasively the requirement, as explained in Section II.B above, that mirror tracking mode involves processing camera-captured images in a way that “maintains roughly the same size regardless of the user movement.” At odds with this requirement, Petitioner founds its case on an assertion that “Haan teaches the claimed mirror tracking mode” because “if the viewer is within 35 cm of the camera, a tracking mode is entered, applying resizing transformation.” Pet. 44 (emphasis added) (citing Ex. 1005 ¶¶ 75–76, 80–82, 90–94, 97; Ex. 1003 ¶¶ 205–210). The resizing transformation Petitioner references actually involves magnifying the user’s image by an amount that changes based on the user’s position relative to the camera, quite the opposite of maintaining image size regardless of the user movement. Ex. 1005 ¶¶ 75–76, Fig. 8. Thus, Petitioner’s initial position is unpersuasive. Petitioner’s shift to Haan’s “reflective mirror mode and conventional mirror period in the dual mode” is also unavailing. Reply 8. Consistent with Patent Owner’s arguments, Petitioner does not provide persuasive evidence that these operating states of Haan’s device involve any processing of camera-captured images. Sur-reply 13–14. To the contrary, Haan suggests that anytime its device provides an unmagnified image, it comes from a reflection off a physical reflective surface. See, e.g., Ex.1005 ¶ 76 (“This can be done for instance by using the device as a simple mirror, i.e. not displaying an image on the display device, but using the device in the reflective mode.”) (emphasis added), ¶ 92 (“a simple reflective mode, to act as a mirror”), ¶ 29 (“for a first range of positions, no image is displayed, whereby the reflective layer acts as a mirror, and for a second range of positions, the recorded image is displayed.”) (emphasis added). We also find unpersuasive Petitioner’s Reply arguments based on Haan’s disclosure of smoothly transitioning from “using the device as a simple mirror” (i.e., using a physical reflecting surface) to displaying a magnified image. Reply 11 (citing Ex. 1005 ¶¶ 76, 80). To the extent this may establish a point around the transition at which Haan’s system displays an image with relatively little magnification, it does not establish that Haan teaches, suggests, or renders obvious holding the displayed size roughly constant, “regardless of the user movement.” Indeed, given Haan’s focus on helping the user see things more clearly with image magnification, Petitioner’s argument that it would have been obvious to hold the size of the image constant is not persuasive. See, e.g., Ex. 1005 ¶ 4.” slip op. at 23

  Patent outcomesUS 8,982,110 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,982,110
• Google LLC / Samsung Electronics Co., Ltd. et al. v. Eyesmatch Ltd.No claims unpatentable
  PTAB · Nov 4, 2025 · IPR2025-00297 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–18 were not shown unpatentable because the prior art did not establish the claimed distance-based variation in the rate of image-processing steps.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Putting aside the controversy over alleged impropriety and sandbagging in connection with the District Court’s Order, which we address infra in connection with Patent Owner’s Motion to Strike, we find the District Court’s “mirror-mimicking” construction to be well-reasoned and supported by the record, and we therefore adopt that construction and its reasoning. As the District Court points out, both the “double the distance” and “same size” aspects of its construction are expressly discussed in the ’109 patent. See Ex. 2008, 16 (citing Ex. 1001, 2:5–27, Figs. 5A, 5B). So, too, is “flipping” or reversing of the image disclosed. Id. at 17 (citing Ex. 1001, 14:46–51, 15:41–47). Petitioner does not dispute that the ’109 patent discloses these aspects of “mirror-mimicking,” or even that the District Court’s claim construction is incorrect. Instead, Petitioner contends that “[t]he Board need not construe ‘mirror mimicking’ [beyond plain meaning] since the prior art expressly discloses mimicking a mirror.” Pet. Reply 6. Further. Petitioner characterizes the claim construction order as “a report and recommendation” by a magistrate judge that “the district court judge has not evaluated or adopted.” Id. at 6 n.2.9 We address infra whether the prior art “expressly” discloses “mirror- mimicking” as construed by the District Court. We, however, disagree with Petitioner that we should not construe this term. Given the controversy over whether Petitioner has argued for a different construction in the District Court, we cannot agree that an explicit construction of “mirror-mimicking” is an unnecessary step toward resolving this controversy. See Vivid Techs., Inc., 200 F.3d at 803. We therefore adopt the District Court’s construction for “mirror-” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “We do not agree. Petitioner demonstrates persuasively that a person of ordinary skill would have combined these references “to reduce distortion and provide a realistic mirror image.” Pet. 14–17; Haram Decl. ¶¶ 110–117. We are not persuaded by Patent Owner that by specifically disclosing “flipping” the image, Rosenberg is discouraging or teaching away from performing other transformations to achieve its objective of “replicat[ing] the performance of a standard household mirror.” See PO Resp. 32–33 (Patent Owner asserting lack of motivation to combine the references). A reference may be said to “teach away” “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Galderma Lab'ys, L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). “A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed. Id. Further, when conducting an obviousness analysis, the Board must consider a prior art reference “not only for what it expressly teaches, but also for what it fairly suggests.” Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1049 (Fed. Cir. 2019) (quoting In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994)). We are not convinced that the references before us “teach away” from performing the other transformations.” slip op. at 30

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

  Patent outcomesUS 8,982,109 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,982,109
• Google LLC / Samsung Electronics Co., Ltd. et al. v. Eyesmatch Ltd.No claims unpatentable
  PTAB · Nov 4, 2025 · IPR2024-00856 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–18 were not shown unpatentable because the cited combinations did not teach or suggest varying the rate of the claimed image-processing steps according to user distance.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Response.” PO Resp. 14 (citing Forsyth Decl. ¶¶ 62– 63). For this Decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.7” slip op. at 13

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Putting aside the controversy over alleged impropriety and sandbagging in connection with the District Court’s Order, which we address infra in connection with Patent Owner’s Motion to Strike, we find the District Court’s “mirror-mimicking” construction to be well-reasoned and supported by the record, and we therefore adopt that construction and its reasoning. As the District Court points out, both the “double the distance” and “same size” aspects of its construction are expressly discussed in the ’109 patent. See Ex. 2008, 16 (citing Ex. 1001, 2:5–27, Figs. 5A, 5B). So, too, is “flipping” or reversing of the image disclosed. Id. at 17 (citing Ex. 1001, 14:46–51, 15:41–47). Petitioner does not dispute that the ’109 patent discloses these aspects of “mirror-mimicking,” or even that the District Court’s claim construction is incorrect. Instead, Petitioner contends that “[t]he Board need not construe ‘mirror mimicking’ [beyond plain meaning] since the prior art expressly discloses mimicking a mirror.” Pet. Reply 6. Further. Petitioner characterizes the claim construction order as “a report and recommendation” by a magistrate judge that “the district court judge has not evaluated or adopted.” Id. at 6 n.2.9 We address infra whether the prior art “expressly” discloses “mirror- mimicking” as construed by the District Court. We, however, disagree with Petitioner that we should not construe this term. Given the controversy over whether Petitioner has argued for a different construction in the District Court, we cannot agree that an explicit construction of “mirror-mimicking” is an unnecessary step toward resolving this controversy. See Vivid Techs., Inc., 200 F.3d at 803. We therefore adopt the District Court’s construction for “mirror-” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “We do not agree. Petitioner demonstrates persuasively that a person of ordinary skill would have combined these references “to reduce distortion and provide a realistic mirror image.” Pet. 14–17; Haram Decl. ¶¶ 110–117. We are not persuaded by Patent Owner that by specifically disclosing “flipping” the image, Rosenberg is discouraging or teaching away from performing other transformations to achieve its objective of “replicat[ing] the performance of a standard household mirror.” See PO Resp. 32–33 (Patent Owner asserting lack of motivation to combine the references). A reference may be said to “teach away” “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Galderma Lab'ys, L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). “A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed. Id. Further, when conducting an obviousness analysis, the Board must consider a prior art reference “not only for what it expressly teaches, but also for what it fairly suggests.” Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1049 (Fed. Cir. 2019) (quoting In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994)). We are not convinced that the references before us “teach away” from performing the other transformations.” slip op. at 30

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “We find that Petitioner has not demonstrated by a preponderance of evidence that step 1(h) is taught or suggested by the references cited by Petitioner or the testimony of Petitioner’s expert, Dr. Karam. We agree, instead, with Patent Owner’s argument that “a [person of ordinary skill] would regard the disclosures in Rosenberg relating to proximity detection to be in connection with turning on or off various display modes and not in connection with varying the rate of one or more steps that are performed to transform a series of captured images of a user.” PO Resp. 33 (citing Ex.1005, ¶¶ 25, 32, 56, 69, 114). This distinction was explored during the final hearing. Petitioner’s counsel confirmed that in Rosenberg’s mirror mode, the rate of performing the processing steps does not vary: [THE BOARD]: It’s true that when the -- when Rosenberg is acting in the mirror mode, it’s always at the same rate, correct? It’s always performing those three processing steps at the same rate? [COUNSEL]: Correct. Hearing Tr. 34:13–16. We conclude that Rosenberg fails to disclose or suggest step 1(h) for the reasons given by Patent Owner and summarized above. We agree with Patent Owner’s analysis that in Rosenberg, when the mirror is off the processing steps are not performed, and when the mirror is on, the steps are performed “at an invariant rate.” PO Sur-reply 18–19.” slip op. at 33

  Patent outcomesUS 8,982,109 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,982,109
• Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing denied
  PTAB · Oct 7, 2025 · IPR2024-01462 · APJ Jo-Anne M Kokoski · IPR · Rehearing

  The Board denied Solus’s rehearing request, leaving institution denied for claims 1–8 because the petition did not adequately show motivation to combine Hanafusa and Dobashi.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “In particular, neither Petitioner nor Dr. Josefowicz adequately explain why a POSITA looking for ways to make Hanafusa’s surface roughness low-profile would look to methods to achieve Dobashi’s RSm values. Dobashi teaches that because RSm “can be adopted as the period of waviness, RSm can also be used as an indicator for judgment of the surface.” Ex. 1005, 2:66–3:1, 6:23–26. Dobashi explains that waviness is “an indicator for determining whether the fine pattern forming performance is good or bad,” and “[t]he surface has small waviness and is smooth when RSm is large, and the surface has large waviness Dobashi also teaches that surface roughness Rzjis is used as a low-profile indicator. Ex. 1005, 2:66–3:1. Dobashi, therefore, teaches that RSm is an indicator of surface waviness, which Dobashi explains is different than surface roughness. Id. at 2:66– 3:3, 6:23–29. Given these teachings in Dobashi, neither Petitioner nor Dr. Josefowicz sufficiently explains how or why a POSITA would have been motivated to implement Dobashi’s RSm values to make Hanafusa’s surface roughness low-profile. See Pet. 10–12; Ex. 1003 ¶¶ 46–52.” slip op. at 4

  § 103 obviousness
  Patents in suitUS 11,346,014
• Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing denied
  PTAB · Oct 7, 2025 · IPR2024-01461 · APJ Jo-Anne M Kokoski · IPR · Rehearing

  The Board denied rehearing and left in place its denial of institution because Petitioner did not show that claims 1–10 were likely obvious over the asserted combinations.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re 1 US 2013/0108922 A1, published May 2, 2013 (Ex. 1004, “Shinozaki”). 2 G. Khatibi, Temperature Dependent Elastic and Thermal Properties of Thin Copper Foils, Copper; Proceedings of the International Conference Copper ’06 (2006) (Ex. 1006, “Khatibi”). 3 Korean Patent Pub. No. 10-2012-0003485, published Jan. 10, 2012 (Ex. 1013; Ex. 1014 (English translation), “Toshio”). 4 US 2013/0108887 A1, published May 2, 2013 (Ex. 1012, “Kim”). 5 Griesi, M.B., Characterization of Electrodeposited Copper Foil Surface Roughness for Accurate Conductor Power Loss Modeling (2014) (Master’s Thesis, University of South Carolina) (Ex. 1015, “Griesi”). rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable

    “For example, Dr. Randall does not provide adequate explanation or objective evidence to support his opinion that Khatibi’s use of a laser speckle based dilatometer instead of the claimed thermomechanical analyzer “is unlikely to significantly impact the CTE[6] value” because “variations in equipment and a heating speed of 5° C/min would not significantly alter the results.” Ex. 1003 ¶ 58. In particular, Dr. Randall neither explains what constitutes a “significant” impact on CTE, nor provides objective evidence to support his contention that equipment variations and heating differences would not “significantly alter” the resulting measurements. And although Dr. Randall opines that “the heating rate (5°C per minute) is typical for certain devices” such as a thermomechanical analyzer or dilatometer, and “[t]ypically, these devices use temperature ramp rates between 2°C and 20°C per minutes, so the ‘5° C./min’ recited in [1d] is common and should not drastically affect the measurement results,” Dr. Randall fails to point us to any evidence showing that these temperatures are “typical” or that the claimed heating rate is “common.” Id. ¶ 59 (emphases added).” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Petitioner, however, does not adequately explain why a POSITA would have been motivated to modify Kim’s copper foil surface to have a Pc value of 19.2 as reported in Griesi. In particular, neither Petitioner nor Dr. Randall points us to, nor do we discern, any teaching in Griesi that a peak count of 19.2 provides any particular benefits or properties that would have lead a POSITA to modify Kim’s copper foil surface as Petitioner proposes. Instead, Petitioner’s arguments that a POSITA would have been motivated to modify Kim’s copper foil surface with Griesi’s peak count patent itself. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (stating that the fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”). It was Petitioner’s burden to establish that the combined teachings Kim and Griesi disclose limitation [1g] as proposed. We are not persuaded that we misapprehended Petitioner’s argument when we determined that Petitioner did not meet that burden.” slip op. at 8

  • BurdenDecided for patent owner

    “It was Petitioner’s burden to establish the Khatibi, alone or in combination with Shinozaki, Toshio, and Kim, discloses limitation [1d]. We concluded that Petitioner failed to meet that burden for the reasons explained in our Decision. We are not persuaded that we overlooked or misapprehended Khatibi’s disclosures, or Petitioner’s evidence and explanation thereof, in doing so.7” slip op. at 5

  § 103 obviousnesscites KSR
  Patents in suitUS 10,811,689
• Micron Technology, Inc. v. Yangtze Memory Technologies Company, Ltd.Institution denied
  PTAB · Aug 12, 2025 · IPR2025-00294 · APJ Kimberly Mcgraw · IPR · Institution

  The Board denied institution because Patent Owner statutorily disclaimed all challenged claims: claims 6, 7, 10, and 20.

  RulingsInstitution decision

  • Adverse judgmentAdverse judgmentDenied

    “A disclaimer is “recorded” pursuant to 35 U.S.C. § 253(a) on the date that the Office receives a disclaimer meeting the above-listed requirements of 37 C.F.R. § 1.321(a) – no further action is required in the Office for a disclaimer to be “recorded.” Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1382 (Fed. Cir. 1998).” slip op. at 3

  None
  Patents in suitUS 10,886,291
• Micron Technology, Inc. v. Yangtze Memory Technologies Co., Ltd.Institution denied
  PTAB · Aug 8, 2025 · IPR2025-00244 · APJ Kimberly Mcgraw · IPR · Institution

  The Board denied institution because the petition did not sufficiently show that Costa disclosed or suggested claim 11.H’s required arrangement, and the dependent claims did not cure that deficiency.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In view of these deficiencies, the Petition fails to identify the proposed grounds for review with particularity as required by 35 U.S.C. § 312(a)(3) with respect to the limitations of independent claim [11.H]. Petitioner presents no arguments or evidence with respect to the dependent claims challenged under this ground that would remedy the defects noted above with respect to independent claim 11. See generally Pet. Thus, Petitioner has failed to demonstrate a reasonable likelihood that the subject matter of claims 11, 12, or 14–19 would have been obvious over Costa.” slip op. at 23

  • BurdenDenied

    “3. Analysis A petition is required to identify “with particularity[ ] the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge.” 35 U.S.C. § 312(a)(3). The “petition . . . must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence”). 37 C.F.R. § 42.22(a)(2). Our rules require that a petition include fully developed arguments. See 37 C.F.R. § 42.22(a)(2) (the “petition . . . must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence”). The petition must include both an adequate explanation of how the claims should be construed as well as how the construed claims are unpatentable over the asserted prior art. 37 C.F.R. § 42.104(b)(3), (b)(4). Additionally, the “petition must specify where each element of the claim is found in the prior art.” 37 C.F.R. § 42.104(b)(4). A petition should also “explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.” ActiveVideo Networks, Inc. v. Verizon Comm'ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012). Thus, based on our rules, we only consider fully developed arguments set forth in the petition.” slip op. at 16

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANot reached

    “arguments. See, e.g., id. at 34–35 (arguing that “on” does not require overlap in the Z direction but “includes both objects that are merely touching (in any dimension) and objects that are in proximity to each other but not touching” (citing Ex. 1078, 1; Ex. 1001, 8:3–12)); see also id. at 36–38 (arguing that if “on” is construed to mean “directly on or on with an intermediate feature or layer therebetween,” then Costa’s second stacked layer 232, 242 and third channel structure (173) are “directly on” each other, because their edges are directly touching each other). The Petition, however, does not clearly present any of the claim construction arguments set forth in the Opposition Brief. See Paper 22 (not clearly identifying where the Petition provides the proposed claim construction); see generally Pet.; see also Pet. 33, 43, 56 (arguing “on” does not require “directly on” and permits intermediate layers but not presenting any of the other claim construction arguments set forth in the Opposition Brief). Nor did the Petition provide any particularized argument as to how Costa discloses or suggests a second stacked layer disposed on the third channel structure applying any of the claim constructions proposed in the Opposition Brief. See generally Pet. (presenting no argument that Costa’s second stacked layer 232, 242 is “on” semiconduction portion layer 173 (the asserted third channel structure) because they touch each other as shown above in Petitioner’s annotation of Costa Figure 21A). We will not consider any arguments not sufficiently set forth in the Petition. See 37 C.F.R. § 42.104(b)(3) (“the petition must set forth . . . [h]ow the challenged claim is to be construed”); 37 C.F.R. § 42.104(b)(4) (“the petition must set forth . . . [h]ow the construed claim is unpatentable”).” slip op. at 19

  • Parallel petitionsNot reached

    “Because we determine that Petitioner did not show a reasonable likelihood that it would prevail on the merits, we do not address Patent Owner’s parallel petitions argument.” slip op. at 23

  Claim constructionDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,886,291
• Micron Technology, Inc. v. Yangtze Memory Technologies Company, Ltd.Instituted
  PTAB · Jul 25, 2025 · IPR2025-00191 · APJ Michael T Cygan · IPR · Institution

  The Board instituted review on all challenged grounds for non-disclaimed claims 3, 6, 8–20; it found a reasonable likelihood of success for claims 8–12 and 19.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). 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 . . . 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 discussed below, we determine that Petitioner has sufficiently shown a reasonable likelihood that it will prevail as to the unpatentability of claims 8–12 and 19 of the ’322 patent but has not sufficiently shown a reasonable likelihood that it will prevail as to the unpatentability as to claims 3, 6, 13–17, and 20. Because Petitioner has sufficiently shown a reasonable likelihood that at” slip op. at 2

  • Adverse judgmentAdverse judgmentOther

    “B. Patent Owner’s Disclaimer of Claims 1, 2, 4, 5, and 7 As indicated above, Patent Owner filed a statutory disclaimer of claims 1, 2, 4, 5, and 7 of the ’322 patent. See Ex. 2006. In view of Patent Owner’s statutory disclaimer, we treat claims 1, 2, 4, 5, and 7 as having never been part of the ’322 patent. See Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in [35 U.S.C.] § 253 to mean that the patent is treated as though the disclaimed claims never existed.”). Because inter partes review cannot be instituted based on disclaimed claims, claims 1, 2, 4, 5, and 7 are outside the scope of this proceeding. 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”); General Elec. Co. v. United Techs. Corp., IPR2017- 00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution in view of a statutory disclaimer of all the challenged claims). Thus, we confine our analysis in this Decision to claims 3, 6, and 8–20, the challenged claims that have not been disclaimed.” slip op. at 3

  • Other 314aDenied

    “Patent Owner filed a Brief on Discretionary Denial, and Petitioner filed a brief in opposition. Papers 10 and 18. The Director considered the briefing and determined that discretionary denial was not warranted. Paper 21.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “at the critical time “would have had a Bachelor of Science degree in electrical engineering or a similar discipline, along with 2–3 years of professional experience working with (e.g., researching, designing, or teaching) monolithic 3D structures and NAND memory devices, or an equivalent level of skill, knowledge, and experience (e.g., an advanced degree may replace some of the professional experience).” Pet. 27 (citing Ex. 1003 ¶¶ 34–38). Petitioner further asserts that a POSITA “would have been aware of and generally knowledgeable about 3D NAND’s structure, how it is manufactured, and its component parts.” Id. Patent Owner does not provide any such assessment in its Preliminary Response. Prelim. Resp. 8; Ex. 2007 ¶ 22 (reserving the right to opine as to an alternative level of a POSITA). For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’322 patent and the prior art of record.” slip op. at 8

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 11,581,322

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.