- Savant Technologies LLC D/B/A GE Lighting / Ledvance LLC et al. v. Feit Electric Company, Inc.All claims unpatentablePTAB · Aug 31, 2026 · IPR2025-00260 · APJ Kevin W Cherry · IPR · Final written decision
The Board held all challenged claims 1–3, 6, 7, 9–14, 16–21, 25, 26, and 29 unpatentable as obvious and granted the motion to amend for substitute claims 30–49.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“E. Credibility of Dr. Doolittle Patent Owner argues that we should give no weight to Dr. Doolittle’s testimony because, “[o]n cross examination, Prof. Doolittle repeatedly contradicted himself, dodged questions, and tried to shoehorn new and nonresponsive opinions into his answers to Patent Owner’s questions.” PO Resp. 25. Patent Owner raises two major complaints about Dr. Doolittle. First, Patent Owner argues that he took inconsistent positions by asserting in these IPR proceedings that the claims were entitled to their plain and ordinary meaning, while in the parallel district court proceeding, asserting that certain claim terms were indefinite. Id. at 26–28. Second, Patent Owner argues that Dr. Doolittle “repeatedly dodged questions and tried to shoehorn new and nonresponsive opinions into his answers to Patent Owner’s questions,” and that “[d]uring cross examination Patent Owner was forced to object to Prof. Doolittle’s nonresponsive answers no less than eighteen times.” Id. at 28. We strongly disagree with Patent Owner’s characterization of Dr. Doolittle’s testimony. We have reviewed the entirety of both of Dr. Doolittle’s depositions. We are impressed with his forthrightness, candor, and good humor in the face of Patent Owner’s counsel’s aggressive questioning. Contrary to Patent Owner’s assertions, we find that his testimony was well-reasoned, forthright, honest, and entitled to significant weight. Dr. Doolittle explained the different claim construction positions We also strongly disagree that Dr. Doolittle’s answers were nonresponsive or “evasive” as Patent Owner argues. Patent Owner’s numerous attempts to “strike” portions of his testimony belie Dr. Doolittle’s efforts to honestly and in good faith respond to Patent Owner’s counsel’s questions. Ex. 2025, 22:10–23:15, 25:9–26:14, 30:14–22, 40:3-9, 58:12–59:1, 60:18–61:13, 65:1–10, 83:15–84:16, 92:15–95:20, 96:18–99:9, 102:22–106:16, 135:3–136:22. An answer is not “non-responsive” simply because it does not conform to the conclusion you want or undermines the logic underlying your questioning. Dr. Doolittle explained his answers and addressed the issues Patent Owner asked about. Accordingly, we decline Patent Owner’s invitation to give Dr. Doolittle’s testimony no weight. Instead, we assess Dr. Doolittle’s testimony on a case-by-case basis as discussed below.” slip op. at 21
- Skill levelOther
“B. Level of Ordinary Skill in the Art We consider the asserted ground of unpatentability in view of the understanding of a person of ordinary skill in the art (“POSITA” or “POSA”). In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d Relying on the declaration testimony of its expert, Dr. Doolittle, Petitioner contends that an ordinarily skilled artisan for the ’678 patent “would have had an undergraduate degree (i.e., B.S., B.S.E. or the equivalent) in electrical engineering, materials science, physics, or a similar discipline” and “would also have one to two years of experience in the field of LED packaging design.” Pet. 5–6. Petitioner additionally contends that “[m]ore education could substitute for experience, and vice versa.” Id. Petitioner further contends that “[t]his person would have been capable of understanding and applying the teachings of the ’678 patent and the prior-art references discussed herein,” and “[m]oreover, the prior art reflects the level of skill at the time of the claimed invention.” Id. (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); Ex. 1102 ¶¶ 38–42). Patent Owner states that “solely for the purposes of this proceeding, Patent Owner and its technical expert employ the same level of skill in the art as Petitioners.” PO Resp. 24–25. Thus, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’678 patent and the asserted prior art, and we apply it in our obviousness analysis below.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“lower wavelength might offer, there were other drawbacks that a person of ordinary skill would have to balance. But “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Indeed, Petitioner has shown several references—including, Basin-2005, Shimizu, and Stokes—that made this tradeoff. Moreover, “[o]bviousness does not require absolute predictability of success. . . . [A]ll that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988). We find that the prior art of record demonstrates that a person of ordinary skill in the art at the time of the invention would have such an expectation in making the combination of Basin-2007 and Basin-2005. Accordingly, we find that Petitioner has shown by a preponderance of the evidence that there would have been motivation to combine Basin-2007 and Basin-2005 with a reasonable expectation of success. 4. Summary We have reviewed Petitioner’s contentions regarding claims 1–3, 6, 9, 10, 16–21, and 25 (Pet. 19–53), and find that Petitioner has shown by a preponderance of the evidence that Basin-2007 and Basin-2005 teach the limitations of those claims, and that there would have been a motivation to combine the references in the manner suggested with a reasonable considerations does not outweigh the strong showing of obviousness. Accordingly, we find that Petitioner has shown by a preponderance of the evidence that claims 1–3, 6, 9, 10, 16–21, and 25 would have been obvious over Basin-2007 and Basin-2005.” slip op. at 41
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“1. Nexus In order for secondary considerations to be awarded “substantial” slip op. at 22
Patent outcomesUS 8,604,678 unpatentable§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 8,604,678 - Boe Technology Group Co., Ltd. v. Optronic Sciences LLCAdverse judgmentPTAB · Jan 12, 2026 · IPR2024-01134 · APJ Thu A Dang · IPR · Adverse judgment
The Board denied Patent Owner’s termination request and granted adverse judgment after it disclaimed the entire patent, leaving no claims in the trial.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. “Actions construed to be a request for adverse judgment include: . . . [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). “The application of the [adverse judgment] rule on its face does not turn on the patentee’s characterization of its own request.” Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1349 (Fed. Cir. 2018). In this case, Patent Owner’s disclaimer of the entire term of the ’733 patent leaves no claims remaining in the trial. Although Patent Owner argues that entry of adverse judgment “has negative effects that would discourage Patent Owner from making efforts to streamline the issues” (PO Sur-reply 1–2), we deem such argument not a persuasive reason as to why we should not apply § 42.73(b)(2), or why termination is more appropriate. Therefore, pursuant to 37 C.F.R. § 42.73(b)(2), we construe Patent Owner’s disclaimer as a request for adverse judgment, which we grant.” slip op. at 3
NonePatents in suitUS 9,406,733 - Boe Technology Group Co., Ltd. v. Optronic Sciences LLCAdverse judgmentPTAB · Jan 12, 2026 · IPR2024-01315 · APJ Kevin W Cherry · IPR · Adverse judgment
The Board denied Patent Owner’s termination request and entered adverse judgment after Patent Owner disclaimed all challenged claims, leaving no claims in the trial.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. “Actions construed to be a request for adverse judgment include: . . . [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). “The application of the [adverse judgment] rule on its face does not turn on the patentee’s characterization of its own request.” Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1349 (Fed. Cir. 2018). In this case, Patent Owner’s disclaimer of claims 1 and 3 of the ’477 patent leaves no claims remaining in the trial. Although Patent Owner argues that entry of adverse judgment “has negative effects that would discourage Patent Owner from making efforts to streamline the issues” (PO Sur-reply 1–2), we deem such argument not a persuasive reason as to why we should not apply § 42.73(b)(2), or why termination is more appropriate. Therefore, pursuant to 37 C.F.R. § 42.73(b)(2), we construe Patent Owner’s disclaimer as a request for adverse judgment, which we grant.” slip op. at 3
NonePatents in suitUS 8,158,477 - PTAB · Oct 29, 2025 · IPR2025-00918 · APJ Avelyn M Ross · IPR · Institution
The Board instituted inter partes review of claims 1–11 on all asserted grounds and granted Canadian Solar’s motion for joinder in IPR2025-00007.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We instituted review of claims 1–11 of the ’104 patent in IPR2025-00007 after a review of all arguments and evidence presented by the parties, including Patent Owner’s arguments in its preliminary response. For the reasons discussed in the Institution Decision in IPR2025-00007, we determine that Petitioner demonstrates a reasonable likelihood of showing at least one claim of the ’104 patent is unpatentable. Thus, we find that the Petition warrants institution of inter partes review on all claims and grounds set forth in the Petition.” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Patent Owner did not file an opposition to Petitioner’s Motion for Joinder. Upon consideration of Petitioner’s arguments, we are persuaded that it is appropriate under these circumstances to join Petitioner to the proceeding in IPR2025-00007. Petitioner’s agreement to accept an “understudy” role and to not actively participate in IPR2025-00007 unless the current petitioner ceases to participate will limit any potential impact on the trial schedule and will avoid increasing the costs or complexity of the proceeding. Therefore, joinder of 8 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. Petitioner to IPR2025-00007 will further the goals of a just, speedy, and inexpensive resolution of Petitioner’s challenge. 37 C.F.R. § 42.1(b).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’104 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’104 patent and the prior art. We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 11
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 9,722,104 - PTAB · Oct 29, 2025 · IPR2025-00917 · APJ Debra L Dennett · IPR · Institution
The Board instituted IPR on claims 1–17 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable, and granted Canadian Solar’s motion for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We instituted review of claims 1–17 of the ’009 patent in IPR2025-00006 after a review of all arguments and evidence presented by the parties, including Patent Owner’s arguments in its preliminary response. For the reasons discussed in the Institution Decision in IPR2025-00006, we determine that Petitioner demonstrates a reasonable likelihood of showing at least one claim of the ’009 patent is unpatentable. Thus, we find that the Petition warrants institution of inter partes review on all claims and grounds set forth in the Petition.” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Patent Owner did not file an opposition to Petitioner’s Motion for Joinder. Upon consideration of Petitioner’s arguments, we are persuaded that it is appropriate under these circumstances to join Petitioner to the proceeding in IPR2025-00006. Petitioner’s agreement to accept an “understudy” role and to not 8 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. actively participate in IPR2025-00006 unless the current petitioner ceases to participate will limit any potential impact on the trial schedule and will avoid increasing the costs or complexity of the proceeding. Therefore, joinder of Petitioner to IPR2025-00006 will further the goals of a just, speedy, and inexpensive resolution of Petitioner’s challenge. 37 C.F.R. § 42.1(b).” slip op. at 12
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person of ordinary skill in the art would have been someone with an advanced degree involving the disciplines of electrical engineering, applied physics, chemistry, or materials science, and at least two years of experience designing, developing, or researching in the field. Alternatively, that person would have had a bachelor’s degree in electrical engineering, applied physics, or materials science, and at least three years of experience designing, developing, or researching in the field. Pet. 5 (citing Ex. 1003 ¶ 49). In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’009 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’009 patent and the prior art. We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[n]o claim construction is necessary to resolve this Petition.” Pet. 25. For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 11
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 10,230,009 - PTAB · Jun 23, 2025 · IPR2025-00260 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted inter partes review of claims 1 and 11–14 on all asserted grounds and consolidated the proceeding with IPR2024-01357.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In our Institution Decision in IPR2024-01357, we analyzed claim 1 of the ’678 patent in light of Basin-2007 and Basin-2005. ’1357 IPR, Paper 17, 23–28. We concluded, after reviewing the arguments presented there, that “Petitioner has demonstrated a reasonable likelihood of proving that the combined teachings of Basin-2005 and Basin-2007 render claim 1 unpatentable as obvious.” Id. at 28. In this proceeding, Petitioner has presented a challenge to claim 1 based on those same references that it represents is a “verbatim” copy of its previous challenge to claim 1 in the ’1357 IPR. Pet. 1–2, 28–35. Petitioner supports its challenge with expert testimony. Ex. 1002 ¶¶ 107–125.7 Patent Owner has not submitted a response on the merits of this challenge. For the purposes of this Decision, and for the reasons given in the Petition, we adopt the analysis in our Institution Decision in the ’1357 IPR (at pp. 23–28), where we determined that Petitioner has demonstrated a reasonable likelihood of prevailing on its obviousness challenge to claim 1 based on Basin-2005 and Basin-2007. Turning now to Petitioner’s challenge to claim 11, Petitioner relies on Basin-2007 and Stokes for the particle size limitations added to claim 1 by that dependent claim. Pet. 35–39. Thus, Petitioner asserts that “Basin-2007 discloses a light scattering material with an average TiO2 particle size that is ‘sub-micron’ (less than 1000 nm).” Id. at 37 (citing Ex. 1005 ¶ 5). 7 Exhibit 1002 appears to be a duplicate copy of Dr. Doolittle’s declaration from the ’1357 IPR. Petitioner concludes, “Basin-2007 renders obvious claim 11 by literally disclosing the selection of average particle sizes that preferentially scatter blue light.” Id. Further, “to the extent that the claim language ‘an average particle size that is selected such that [it preferentially scatters blue light]’ requires an average particle size selected for that reason (rather than an average particle size that leads to that outcome), this claim element is rendered obvious by Stokes.” Id. at 38 (citing Doolittle Decl. ¶ 45) (alterations in original). Petitioner explains that “Stokes explicitly discloses the selection of an average particle size ‘such that the particles preferentially scatter blue . . . LED light as compared to yellow . . . light from the luminescent material.’” Id. at 38 (citing Ex. 1008, 7:1–4) (alterations in original). Petitioner provides a motivation for combining Stokes with Basin- 2007 with a reasonable expectation of success. Pet. 38–39. Petitioner explains that “[t]o the extent that claim 11 is understood to also claim the basis for selecting a particular average particle size, a [person of ordinary skill] would have had reason to use such a basis for selecting average particle size as taught by Stokes.” Id. at 38 (citing Doolittle Decl. ¶¶ 46–48). Further, “a [person of ordinary skill] would have been motivated to apply this principle to Basin-2007, because it would increase the conversion of blue light to yellow light and improve the uniformity of the light source.” Id. at 39 (citing Doolittle Decl. ¶ 48). At this stage, Patent Owner does not provide an opposition to Petitioner’s evidence or arguments on the merits. For the reasons given by Petitioner, including those summarized above, we determine that Petitioner” slip op. at 6
- Director reviewOther
“On June 12, 2025, the Acting Director issued a decision denying the request and referring the Petition to the Board “to handle the case in the normal course, including by issuing a decision on institution addressing the merits and other nondiscretionary considerations, as appropriate.” Paper 16, 3. The Acting Director further instructed the Board, “[a]bsent extraordinary circumstances, the Board shall consolidate this proceeding with IPR2024-01357.” Id.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As noted supra, the Acting Director of the USPTO has instructed the Board, “[a]bsent extraordinary circumstances, the Board shall consolidate this proceeding with IPR2024-01357.” Paper 16, 3. Due to the similarity of the parties, counsel, subject matter, and asserted prior art between IPR2024- 01357 and this proceeding, and in view of the Acting Director’s guidance, we exercise our discretion to consolidate this proceeding with IPR2024- 01357. See 37 C.F.R. § 42.122(a).” slip op. at 8
NonePatents in suitUS 8,604,678 - PTAB · May 6, 2025 · IPR2025-00187 · APJ Debra L Dennett · IPR · Institution
The Board instituted review of claims 1–17 on all petition grounds and granted Mundra and Adani’s motion to join IPR2025-00006.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We instituted review of claims 1–17 of the ’009 patent in IPR2025-00006 after a review of all arguments and evidence presented by the parties, including Patent Owner’s arguments in its preliminary response. For the reasons discussed in the Institution Decision in IPR2025-00006, we determine that Petitioner demonstrates a reasonable likelihood of showing at least one claim of the ’009 patent is unpatentable. Thus, we find that the Petition warrants institution of inter partes review on all claims and grounds set forth in the Petition.” slip op. at 10
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Petitioner contends that no new grounds of unpatentability are raised in the Petition. Mot. for Joinder 3–4. Petitioner further agrees to an “understudy” role in which it will not seek additional depositions or deposition time, and “will assume the primary role only if Runergy ceases to participate in the Runergy IPR.” Id. at 1, 5–6. And, argues that “[b]ecause . . . [the] Petition presents the identical grounds for the challenged claims and the same evidence, there are no new issues 8 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. for Patent Owner to address” and “joinder with the Runergy IPR will not unduly burden or negatively impact the schedule in that proceeding in any way.” Id. at 5; see also id. at 6 (“briefing and discovery will be simplified because Patent Owner can maintain its current trial schedule and avoid duplicative efforts”.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have been someone with an advanced degree involving the disciplines of electrical engineering, applied physics, chemistry, or materials science, and at least two years of experience designing, developing, or researching in the field. Alternatively, that person would have had a bachelor’s degree in electrical engineering, applied physics, or materials science, and at least three years of experience designing, developing, or researching in the field. Pet. 4–5 (citing Ex. 1003 ¶ 49). Patent Owner does not address the level of ordinary skill in the art at this stage of the proceeding. See generally Prelim. Resp. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’009 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’009 patent and the prior art. We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[n]o claim construction is believed to be necessary to resolve this Petition.” Pet. 25. And, Patent Owner does not address claim construction at this stage of the proceeding. See generally Prelim. Resp. For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 10
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 10,230,009 - PTAB · May 6, 2025 · IPR2025-00186 · APJ Avelyn M Ross · IPR · Institution
The Board instituted IPR on claims 1–11 on all petition grounds and granted Mundra and Adani’s motion to join IPR2025-00007.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“after a review of all arguments and evidence presented by the parties, including Patent Owner’s arguments in its preliminary response. For the reasons discussed in the Institution Decision in IPR2025-00007, we determine that Petitioner demonstrates a reasonable likelihood of showing at least one claim of the ’104 patent is unpatentable. Thus, we find that the Petition warrants institution of inter partes review on all claims and grounds set forth in the Petition.” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“In considering a motion for joinder, and whether such joinder is appropriate, the Board may consider “whether a new ground of unpatentability is raised in the second petition, how the cost and schedule of the first proceeding will be impacted if joinder is granted, and whether granting joinder will add to the complexity of briefing and/or discovery.” Patent Trial and Appeal Board Consolidated Trial Practice Guide November 20198 at 76 (citing Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have been someone with an advanced degree involving the disciplines of electrical engineering, applied physics, chemistry, or materials science, and at least two years of experience designing, developing, or researching in the field. Alternatively, that person would have had a bachelor’s degree in electrical engineering, applied physics, or materials science, and at least three years of experience designing, developing, or researching in the field.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 10
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 9,722,104 - Lam Research Corp. v. Inpria Corp.All claims unpatentablePTAB · Apr 18, 2025 · IPR2024-00033 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1–12 are unpatentable as anticipated by the ’888 Publication; Patent Owner’s motion to add substitute claims 13–23 is granted.
RulingsFinal written decision- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“priority issue are based on the cited disclosures of the ’867 application discussed above. Ex. 2009 ¶ 29. For the reasons discussed above, we do not view the cited disclosures as sufficiently supporting Dr. Banerjee’s conclusion that the ’867 application provides support for claim 1’s average thickness range (id.) and, therefore, give this testimony little weight. Stated somewhat differently, Dr. Banerjee’s advances an opinion (really a legal one) that is not supported by the facts and not in line with the caselaw discussed in this section (such as RAI).” slip op. at 26
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner
“priority issue are based on the cited disclosures of the ’867 application discussed above. Ex. 2009 ¶ 29. For the reasons discussed above, we do not view the cited disclosures as sufficiently supporting Dr. Banerjee’s conclusion that the ’867 application provides support for claim 1’s average thickness range (id.) and, therefore, give this testimony little weight. Stated somewhat differently, Dr. Banerjee’s advances an opinion (really a legal one) that is not supported by the facts and not in line with the caselaw discussed in this section (such as RAI).” slip op. at 26
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“d) Conclusion For the reasons discussed above, Petitioner has demonstrated by a” slip op. at 30
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“For these reasons, Patent Owner has met its burden to show by a” slip op. at 34
Patent outcomesUS 9,823,564 unpatentable§ 102 anticipationcites Phillips · KSR · Graham · NautilusPatents in suitUS 9,823,564 - PTAB · Jan 15, 2025 · IPR2024-01108 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1, 2, 5–8, 10–15, 17, 18, 20, and 21 under § 103 and granted BRP’s motion to join the Foil Boarding IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage of the proceeding and based on our preliminary review, we find Petitioner has demonstrated a reasonable likelihood of showing the unpatentability of the Challenged Claims for the same reasons discussed in our Decision on Institution in the Foil Boarding IPR. Granting the Petition and joining Petitioner to the Foil Boarding IPR will provide us with the opportunity to more fully consider Patent Owner’s arguments—first raised in response to the petition in the Foil Boarding IPR—in the context in which they were first raised. Those common arguments will be fully considered in the Foil Boarding IPR, with the benefit of a complete record.8 Accordingly, for the reasons discussed above, we are persuaded Petitioner has demonstrated a reasonable likelihood of showing the unpatentability of the Challenged Claims of the ’044 patent. We therefore grant the Petition, and institute inter partes review of the Challenged Claims.” slip op. at 6
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“challenges the same claims on the same grounds using the same prior art, Kyocera factor (2) favors joinder. See Kyocera, IPR2013-00004, Paper 15 at 4. Indeed, the Board “routinely grants motions for joinder where the party seeking joinder introduces identical arguments and the same grounds raised in the existing proceeding.” Samsung Elecs. Co. v. Raytheon Co., IPR2016- 00962, Paper 12 at 9 (PTAB Aug. 24, 2016). Moreover, because the issues to be decided are the same and Petitioner avers that it will take an “understudy” role to Foil Boarding in the Foil Boarding IPR by consolidating all filings, refraining from advancing new arguments, binding itself to any discovery agreements, and limiting its deposition time to the time already allotted, Kyocera factors (3) and (4) also favor joinder. See Mot. 4–6; Kyocera, IPR2013-00004, Paper 15 at 4. For the reasons explained above, we find that joining Petitioner to the Foil Boarding IPR is appropriate under the present circumstances. We, therefore, grant Petitioner’s Motion.” slip op. at 8
NonePatents in suitUS 9,359,044
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.