- PTAB · Dec 19, 2025 · IPR2025-01110 · APJ Kristen L Droesch · IPR · Institution
The Board instituted IPR on claims 1–16, finding a reasonable likelihood they are obvious over Kim and over Chu and Choi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable 1 Deputy Director Stewart was recused in this matter. claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine, based on the record before us, there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least 3 years of experience in the research, design or development of wireless communication devices, systems, and/or networks, or the equivalent, as of the Critical Date,” and that “[i]ncreased educational experience can make up for less work experience, and vice versa.” Pet. 2 (citing Ex. 1003 ¶¶ 26–28). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art, except as to the date that pertains to such skill level. Prelim. Resp. 4–5. Namely, Patent Owner asserts that “Petitioner is incorrect” that “the ’171 Patent is entitled to an effective date of no earlier than January 22, 2021.” Id. at 5. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’171 Patent Specification and the asserted prior art, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of required experience.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“claim construction standard as that applied in federal courts in a civil action under 35 U.S.C. § 282(b), which is generally referred to as the Phillips standard. See 37 C.F.R. § 42.100(b); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under the Phillips standard, “words of a claim ‘are generally given their ordinary and customary meaning.’” Phillips, 415 F.3d at 1312. “Petitioner submits that no formal claim constructions are necessary.” Pet. 1–2. Similarly, “Patent Owner does not contend that any formal claim construction is necessary” at this stage of the proceeding. Prelim. Resp. 5. For the purpose of institution, we need not explicitly construe any claim terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. 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
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 870–71 (Fed. Cir. 2010). For a claim in a later-filed application to be entitled to the filing date of an earlier application, the earlier application must provide written description support for the claimed subject matter. Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1337 (Fed. Cir. 2010). To satisfy the written description requirement, “a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997); see also VasCath v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“[T]he applicant must [] convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention . . . now claimed.”), Ariad Pharm. Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (“[I]t is the specification itself that must demonstrate possession.”). On the record before us, we do not agree that the ’171 Patent is entitled to a filing date earlier than Jan. 11, 2021. In particular, we do not agree that PCT ’199 describes the invention in enough detail such that a person of ordinary skill in the art could conclude that the inventor was in possession of the invention as of the March 4, 2016 filing date. The disclosures of PCT ’199 cited by Patent Owner to show written description support show: (1) transmission packets for multi-user uplink data, which includes padding such that multi-user upstream data transfers from each resource terminate at the same time (see Ex. 1012 ¶¶ 17–21); (2) performing padding on a trigger frame that triggers multi-user simultaneous transmission, where the trigger frame includes AID information of the performing preset padding before the FCS field of the trigger frame according to one embodiment (see Ex. 1012 ¶ 136, Fig. 20); and (4) inserting redundant AID information prior to the FCS field of the trigger frame, according to another embodiment (see Ex. 1012 ¶ 136, Fig. 20). PCT ’199 does not describe the invention in enough detail to enable a person of ordinary skill in the art to conclude that the inventor possessed a frame for allocating resource for uplink (UL) multi-user (MU) transmission to one or more terminals that includes the AID field set to a value related to a first padding field, when the padding field is included in the frame. In particular, we discern no disclosure that conveys that the inventor possessed the following: (1) an AID field for the MU UL resource allocation frame is set to a value, (2) that the AID field is set to a value related to the padding field, and (3) that the AID field is set to a value related to the padding field, and conditioned on the inclusion of the AID field in the frame. Moreover, to the extent that Patent Owner’s assertions are premised on the PCT ’199’s disclosure of a preset padding being performed before the FCS field of the trigger frame and the disclosure of inserting redundant AID information prior to the FCS field of the trigger frame, we note that these disclosures are directed to two embodiments. See Ex. 1012 ¶ 136, Fig. 20. PCT ’199 does not provide any suggestion that the two embodiments are used together, or that the redundant AID information of one embodiment can serve as a preset padding of the other embodiment.” slip op. at 16
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 11,716,171 - PTAB · Dec 19, 2025 · IPR2025-01111 · APJ Kristen L Droesch · IPR · Institution
The Board instituted IPR on claims 1–18, finding a reasonable likelihood they are unpatentable over Kim and over Chu in combination with Choi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable 1 Deputy Director Stewart was recused in this matter. claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine, based on the record before us, there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least 3 years of experience in the research, design or development of wireless communication devices, systems, and/or networks, or the equivalent, as of the Critical Date,” and that “[i]ncreased educational experience can make up for less work experience, and vice versa.” Pet. 2 (citing Ex. 1003 ¶¶ 26–28). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art, except as to the date that pertains to such skill level. Prelim. Resp. 4. Namely, Patent Owner asserts that “Petitioner is incorrect” that “the ’186 Patent is entitled to an effective date of no earlier than April 8, 2019.” Id. at 4–5. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’186 Patent Specification and the asserted prior art, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of required experience.” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“of an earlier application, the earlier application must provide written description support for the claimed subject matter. Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1337 (Fed. Cir. 2010). To satisfy the written description requirement, “a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997); see also VasCath v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“[T]he applicant must [] convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention . . . now claimed.”), Ariad Pharm. Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (“[I]t is the specification itself that must demonstrate possession.”). On the record before us, we do not agree that the ’186 Patent is entitled to a filing date earlier than April 8, 2019. In particular, we do not agree that PCT ’199 describes the invention in enough detail such that a person of ordinary skill in the art could conclude that the inventor was in possession of the invention as of the March 4, 2016 filing date. The disclosures of PCT ’199 cited by Patent Owner to show written description support, show: (1) transmission packets for multi-user uplink data, which includes padding such that multi-user upstream data transfers from each resource terminate at the same time (see Ex. 1012 ¶¶ 17–21); (2) performing padding on a trigger frame that triggers multi-user simultaneous transmission, where the trigger frame includes AID information of the stations assigned to each channel (see Ex. 1012 ¶¶ 134–135, Fig. 20); (3) performing preset padding before the FCS field of the trigger frame inserting redundant AID information prior to the FCS field of the trigger frame, according to another embodiment (see Ex. 1012 ¶ 136, Fig. 20). PCT ’199 does not describe the invention in enough detail to enable a person of ordinary skill in the art to conclude that the inventor possessed a trigger frame indicating uplink transmission for one or more terminals that includes an AID field used to identify whether the trigger frame includes a padding field, and the trigger frame including the padding field when the AID field is set to a specific value. In particular, we discern no disclosure that conveys that the inventor possessed the following: (1) a trigger frame indicating uplink transmission to one or more terminals and including an AID field used to identify whether the trigger frame includes a padding field; (2) the AID field for the trigger frame is set to a specific value, and (3) that trigger frame includes the padding field when the AID field is set to a specific value. Moreover, to the extent that Patent Owner’s assertions are premised on the PCT ’199’s disclosure of a preset padding being performed before the FCS field of the trigger frame and the disclosure of inserting redundant AID information prior to the FCS field of the trigger frame, we note that these disclosures are directed to two embodiments. See Ex. 1012 ¶ 136, Fig. 20. PCT ’199 does not provide any suggestion that the two embodiments are used together, or that the redundant AID information of one embodiment can serve as a preset padding of the other embodiment. On the record before us, we also do not agree that KR ’754 describes the invention in enough detail such that a person of ordinary skill in the art could conclude that the inventor was in possession of the invention as of the March 17, 2015 filing date of KR ’754. The disclosures of KR ’754 cited by Patent Owner to show written description support show: (1) multiplexed terminals over respective channels, (see Ex. 1008 ¶¶ 65–66, Fig. 10); (2) differing the number of AID values in the batch acknowledgment (BA) information field when the number of terminals assigned to each channel differs, setting the length of each multiplexed group ACK differently, and, if necessary, aligning the lengths of the multiplexed group ACKs based on the channel with the longest assigned BA information by adding zero padding or repeatedly inserting BA information (see Ex. 1008 ¶¶ 66–70, Fig. 11); and (3) applying the use of the AID field padding and the use of BA padding in a downlink OFDMA trigger process during multi-user downlink transmission to align the length of the trigger when the AP notifies the terminals assigned to each channel by inserting zero padding or repeating AIDs (see Ex. 1008 ¶¶ 71–72, Figs. 11–12). KR ’754 does not describe the invention in enough detail to enable a person of ordinary skill in the art to conclude that the inventor possessed a trigger frame indicating uplink transmission for one or more terminals that includes an AID field used to identify whether the trigger frame includes a padding field, and the trigger frame including the padding field when the AID field is set to a specific value. In particular, we do not discern disclosure in KR ’754 that conveys that the inventor possessed the following: (1) a trigger frame indicating uplink transmission to one or more terminals and including an AID field used to identify whether the trigger frame includes a padding field; (2) the AID field for the trigger frame is set to a specific value, and (3) that trigger frame includes the padding field when the AID field is set to a specific value. We find misplaced Patent Owner’s argument that “KR ’754’s discussion about Figure 10 and Figure 11 would have been understood [by a POSITA] as disclosing a padding method used to improve predictability and consistency trigger frame” (Prelim. Resp. 12) because: (1) it addresses uplink transmissions and not a trigger frame indicating uplink transmission to one or more terminals; (2) it does not address that the padding field is included in the trigger frame when the AID field is set to a specific value; and (3) it is unsupported attorney argument regarding the understanding of a person of ordinary skill in the art. Argument of counsel cannot take the place of objective evidence. See Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009). We also find misplaced Patent Owner’s argument that “the padding discussed by KR ’754 regarding its Figure 12 embodiment is not limited to downlink transmission and would have been understood by a POSITA as also being used to schedule uplink ones” (Prelim Resp. 14) because: (1) KR ’754 does not provide any suggestion that the same technique can be used for uplink transmission trigger frames; (2) Patent Owner’s argument does not address that the padding field is included in the trigger frame when the AID field is set to a specific value; and (3) Patent Owner’s argument is unsupported attorney argument regarding the understanding of a person of ordinary skill in the art. See Gemtron, 572 F.3d at 1380. For the foregoing reasons and based on this record, for the purpose of institution, we find that the ’186 Patent is not entitled to an effective filing date earlier than April 8, 2019 and find that Kim is prior art. We note that the limitations at the heart of the written description dispute were added in an amendment filed August 9, 2020. See Ex. 1002, 214–21. In further briefing, the parties should address the respective burdens of production and persuasion for establishing that the ’186 Patent is entitled to an earlier” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We do not agree with Patent Owner’s arguments because they are premised on Choi’s teachings as limited to AIDs transmitted via a control frame broadcast as a TIM element. A prior art “reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphasis omitted). Chu, Choi, and the testimony of Dr. Ding (Ex. 1003), we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to a person of ordinary skill in the art to combine Chu’s teachings with Choi’s use of specific AID or ΔAID values as indicators of the end of meaningful data and the beginning of padding that would allow client stations to reliably determine where the useful content of the trigger frame ends and where optional padding begins, with the benefits of improved parsing efficiency, enhanced synchronization, and reduced likelihood of misinterpreting padding as data as padding. See Pet. 46–48 (citing Ex. 1003 ¶¶ 150–156; Ex. 1015 ¶ 93; Ex. 1016 ¶¶ 24, 184), 61–62 (citing Ex. 1003 ¶¶ 157–163, Pet. 45–48); KSR, 550 U.S. at 418.” slip op. at 29
§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 10,911,186 - 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. Apex Beam Technologies LLCInstitutedPTAB · Dec 8, 2025 · IPR2025-00897 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood that the Kim, Dahlman, and Kim966 combination renders claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4(a) (2024). An inter partes review may be instituted if “the information presented in the petition filed under section 311 and any response filed under section 313 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). Upon consideration of the papers, we determine that the information presented in the Petition demonstrates that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’527 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“invention of the ’527 patent “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology,” and that “[a]dditional education might substitute for some of the experience, and additional substantial experience might substitute for some of the educational background.” Pet. 12 (citing Ex. 1003 ¶¶ 40–43). Patent Owner at this stage of the proceeding does not provide an alternative definition for a level of skill in the art that one would have had at the time of the invention of the ’527 patent or identify any shortcoming in Petitioner’s formulation. See Prelim. Resp. 3–4. For purposes of this Decision on Institution, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 12. We view the definition for the level of ordinary skill is consistent with the ’527 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 2. At this stage, Patent Owner agrees that no terms need construction. Prelim. Resp. 3. We determine that no express constructions are needed for us to render our Decision on Institution. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”). Rather, at this stage of the proceeding, we apply the plain and ordinary meaning of the claim terms.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“discloses the preamble and the remaining limitations of claim 1. Pet. 38–64. Petitioner identifies where the combination of Kim, Dahlman, and Kim966 teaches these limitations, supported with testimony from Dr. Mandayam, which Patent Owner does not specifically rebut at this stage. We determine, on this record, that the combination of Kim, Dahlman, and Kim966 teaches the preamble (whether or not limiting) and the remaining undisputed limitations of claim 1. See LG Elecs., Inc. v. Conversant Wireless Licensing S.A.R.L., 759 F. App’x 917, 925 (Fed. Cir. 2019) (nonprecedential) (“The Board is ‘not required to address undisputed matters’ or arguments about limitations with which it was never presented.”) (quoting In re NuVasive, Inc., 841 F.3d 966, 974 (Fed. Cir. 2016)). We also find that Petitioner has provided sufficiently articulated reasoning, which Patent Owner does not specifically address at this stage, to support combining Kim, Dahlman, and Kim966’s teachings in the manner Petitioner does. Pet. 21–38. 3. Summary In summary, based on the current record, we determine that Petitioner shows a reasonable likelihood that the combination of Kim, Dahlman, and Kim966 renders claim 1 obvious.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,944,527 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Dec 5, 2025 · IPR2025-00903 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that the Kim, Dahlman, and Kim-966 combination renders the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. 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.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented demonstrates a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’110 patent. Accordingly, we institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“966 renders obvious this limitation. See Pet. 50–53. With respect to the “first signaling,” Petitioner argues that the combination teaches “the UE [user equipment] receiving a ‘system information block (‘SIB’) (a first signaling) which can include various types of information such as ‘information about the allocation of subframes to uplink/downlink and configuration of the special subframe in the case of TDD [time division duplexing].” Id. at 43 (citing Ex. 1007, 358–62; Ex. 1004 ¶¶ 21, 65; Ex. 1003 ¶ 100). Petitioner argues that “[b]ecause the SIB assigns time resources or an ‘allocation of subframes for uplink/downlink,’ an SIB would be understood to function as and render obvious as assigning the UE a collection of time intervals (e.g., subframes) or ‘time resource pools.’” Id. at 51 (citing Ex. 1007, 358–62; Ex. 1004 ¶¶ 60–61, 64–78, 84; Ex. 1003 ¶ 113). Petitioner contends that “a POSITA would have understood and found obvious that the first signaling (SIB) is used to determine an ‘allocation of subframes to uplink/downlink’ (a first time resource pool) through an assignment of a Time Division Duplexing (TDD) configuration.” Id. (citing Ex. 1003 ¶ 113). Petitioner submits that “[t]he TDD configuration would identify a series of subframes available for uplink and downlink (a first time” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[a]ll claim terms should be construed according to the Phillips standard,” and that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 2. Patent Owner agrees “that claim construction is not required to resolve any issues.” Prelim. Resp. 2. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Mandayam, Petitioner contends that an ordinarily skilled artisan for the ’110 patent “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology.” Pet. 12. Petitioner additionally contends “[a]dditional education might substitute for some of the experience, and additional substantial experience might substitute for some of the educational background.” Id. Patent Owner “utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 2. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’110 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). We note that our decision would be the same applying either party’s definition of a person of ordinary skill in the art.” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,546,110 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Dec 5, 2025 · IPR2025-00908 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that claims 1–20 are obvious over Fakoorian-1 and Takahashi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. 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.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2024); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’639 patent. Accordingly, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner “utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 3. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’639 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner contends that “[a]ll claim terms should be construed according to the Phillips standard,” and that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 3. Patent Owner agrees “that claim construction is not required to resolve any issues.” Prelim. Resp. 3. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We find that Petitioner has shown sufficiently on this record that the combination of Fakoorian-1 and Takahashi teaches limitations [1d] and [1e]. See Pet. 21–28. As Petitioner argues, Fakoorian-1 includes multiple SPS configurations and teaches that configuration parameters, related to a first and a second SPS configuration, may be sent to the UE in one or more RRC messages. See Pet. 21, 23–24. These parameters include a “periodicity,” “CS-RNTI,” “HARQ process number,” and “service type.” Id. at 21, 24. Petitioner has also shown sufficiently, based on the testimony of Dr. Mandayam, which at this stage stands unrebutted, that a person of ordinary skill in the art would have understood that a “HARQ process number” is “used to indicate which [SPS] configuration(s) are to be” released, and Fakoorian-1’s UE acknowledges the “release by transmitting the acknowledgement in a codebook through a physical uplink control channel (PUCCH) resource.” Id. at 23. As Dr. Mandayam testifies, a person of ordinary skill in the art would have understood, based on Fakoorian-1, that a HARQ process number indicates an identifier for the HARQ codebook to be used by the UE to transmit the acknowledgment. Id. (citing Ex. 1003 ¶ 84). Dr. Mandayam provides sufficient reasoning, at this stage, to support his opinion, so we do not agree with Patent Owner that this testimony is conclusory. See Ex. 1003 ¶¶ 80–84. Thus, on this record, we find that this testimony is sufficient.” slip op. at 15
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,108,639 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Dec 2, 2025 · IPR2025-00905 · APJ Scott A Daniels · IPR · Institution
The Board instituted review of claims 1–5, 7–11, 13–17, and 19–23 on all asserted grounds, finding a reasonable likelihood that Yeo and TS36 render at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), 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.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art stating that “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 2. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’581 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Neither party proposes any claim constructions at this stage. Pet. 19– 20; Prelim. Resp. 2. Where there is no dispute we conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“c) Conclusion as to Independent Claim 1 We have considered and find persuasive, at this stage, Petitioner’s arguments and supporting evidence as set forth at pages 31–45 of the Petition with respect to the remaining limitations [1pre]–[1f] and [1i]. Patent Owner does not contest Petitioner’s arguments as to these remaining limitations. Also, Dr. Ding’s testimony is currently unrebutted. Accordingly, we determine that Petitioner has shown a reasonable likelihood that Yeo alone, or the combined teachings of Yeo and TS36 render independent claim 1 obvious.” slip op. at 15
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,917,581 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Nov 21, 2025 · IPR2025-00906 · APJ Justin T Arbes · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable over 3GPP-38.213, 3GPP-38.213-CR, and 3GPP-38.212-CR.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedOther
“2019),2 a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology,” where “[a]dditional years of experience could substitute for an advanced-level degree (and vice versa).” Pet. 14 (citing Ex. 1003 ¶¶ 39–42). Patent Owner “utilizes Petitioner’s proposed level of skill in the art” for its Preliminary Response. Prelim. Resp. 7. Based on the record presented, including our review of the ’434 patent and the types of 2 Petitioner states that it “assumes for purposes of [its Petition] that the claims are entitled to the earliest claimed priority date—November 5, 2019.” Pet. 14; see Ex. 1001, code (60). problems and solutions described in the ’434 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Interpretation We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner argues that “no claim terms need be construed.” Pet. 10. Patent Owner does not propose interpretations of any claim terms in its Preliminary Response. We conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding, but encourage the parties to address various claim interpretation issues identified below during trial. See infra Section II.D.5; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (emphasis added) (citation omitted)).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“Assessing the evidence of record collectively, however, we are persuaded that Petitioner has shown a reasonable likelihood that 3GPP-38.213-CR was publicly accessible from the ETSI email archive before November 5, 2019. Given his many years of experience with ETSI, in particular his responsibilities pertaining to management of documents like change requests, and as the “list owner” “responsible for managing and administrating” several email exploder lists, Mr. Rodermund appears to be well-qualified to testify to the matters in his declaration. See Ex. 1008 ¶¶ 7, 10–15, 49. He explains in detail how, based on his experience, emails sent to a 3GPP email exploder were accessible on the email archive immediately after being sent. Id. ¶¶ 44–60, 72–80. That explanation is supported by screenshots from various websites and other corroborating evidence. See Ex. 1008 ¶¶ 44–60, 72–80. The November 3, 2019, email with 3GPP-38.213-CR as an attachment is currently available to the public via the email archive, with no login, password, or membership required to access it. Id. ¶¶ 44, 74; see Kyocera, 545 F.3d at 1351 (“[ETSI] specifications themselves were visible to any member of the interested public without requesting them from an ETSI member. Further, ETSI did not impose restrictions on ETSI members to prevent them from disseminating information about the standard to non-members.”). The metadata for the file indicates that it was created and last modified one day before the email was sent. Ex. 1008 ¶ 76. And Mr. Rodermund discusses one example where a listserv email was uploaded to the archive just minutes after being sent. Id. ¶¶ 50–51. Although that example is from 2025 rather than 2019, it provides some support for his opinion that the same “near contemporaneous” timing would have been the case in 2019 as well. See id. ¶ 52. Immediately making emails like the one with the 3GPP-38.213-CR change request available on the email archive is consistent with 3GPP’s overall purpose of making standards documents available “so that engineers and other individuals would have ready access to them when developing and implementing cellular networks and devices.” See id. ¶ 35; Kyocera, 545 F.3d at 1351 (finding that the “primary purpose of the [standard at issue] was to develop a system interoperable across national borders,” which “made it crucial to grant access to any interested parties”); Cradlepoint, Inc. v. Sisvel Int’l S.A., IPR2020-01103, Paper 46 at 13–14 (PTAB Jan. 18, 2022) (finding, based on the preponderance of the evidence, that “testimony concerning [a 3GPP] email exploder and listserv provide further support for a conclusion of public accessibility because it tends to show that 3GPP was known beyond its members, that the meetings were widely publicized, and that 3GPP documents were, in general, widely available”). Finally, Mr. Rodermund explains in detail how a person of ordinary skill in the art could have accessed the email with 3GPP-38.213-CR, using the indexing of the email archive. See Ex. 1008 ¶¶ 49, 53–60. We are persuaded that Mr. Rodermund’s testimony and supporting evidence are sufficient at this stage. Patent Owner will have the opportunity to cross-examine Mr. Rodermund and explore the bases for his statements. And our ultimate determination of the weight to be given to his testimony will be based on the complete record at the end of trial. Based on the totality of the evidence currently in the record, Petitioner has established a reasonable likelihood that 3GPP-38.213-CR is a prior art printed publication under 35 U.S.C. § 102(a)(1).” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“is that Petitioner has not shown sufficiently that 3GPP-38.213-CR and 3GPP-38.212-CR are prior art printed publications. Prelim. Resp. 2–10. We disagree on this record for the reasons explained above. See supra Section II.D.4. Patent Owner does not dispute Petitioner’s arguments regarding the limitations of claim 1 or Petitioner’s asserted motivation to combine the references. See Prelim. Resp. 2–10. Petitioner’s contentions are supported by the testimony of Dr. Mandayam and are persuasive based on the current record. See Pet. 14–48; Ex. 1003 ¶¶ 52–67, 81–113. Petitioner has shown a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over 3GPP-38.213, 3GPP-38.213-CR, and 3GPP-38.212-CR. Accordingly, we institute review “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a).” slip op. at 28
Claim construction§ 102 anticipationcites KSR · GrahamPatents in suitUS 10,965,434 - PTAB · Nov 14, 2025 · IPR2025-00911 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR of claims 1–16 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority under 35 U.S.C. § 314 to determine whether to institute an inter partes review. 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.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 584 U.S. 357, 363–66 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2024); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented demonstrates a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’615 patent. Accordingly, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Akl, Petitioner contends that an ordinarily skilled artisan for the ’615 patent “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology.” Pet. 3. Petitioner additionally contends that “[a]dditional years of experience could substitute for an advanced-level degree (and vice versa).” Id. Patent Owner states that “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 2. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’615 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no formal construction are presently necessary for purposes of demonstrating obviousness of the Challenged Claims based on [the asserted grounds].” Pet. 9. Patent Owner does not at this time address claim construction. See generally Prelim. Resp. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We note, however, there may be some claim terms below whose constructions the parties may wish to address during trial.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“On the current record, we find that Petitioner has shown sufficiently that Cirik teaches the claimed “configuration parameters comprising first random access parameters, for beam failure recovery.” See Pet. 13– 17. Patent Owner argues that Petitioner fails to address this limitation, but we disagree. Prelim. Resp. 3. As we have set out above, Petitioner has provided a detailed mapping of what disclosures of Cirik (and Cirik’s provisional) on which it relies. Based on the current record, we see nothing incorrect in Petitioner identifying multiple parameters as making up the “configuration parameters comprising first random access parameters, for beam failure recovery.” As the plain language of claim 1 makes clear, there are “parameters”—plural—not just one. We also find, on the current record, that those “parameters” are not limited by the claim to only “random access parameters.” The disputed claim limitation uses the transitional phrase “comprising” in reciting the “configuration parameters comprising first random access parameters, for beam failure recovery.” As courts have explained, “[i]n the parlance of patent law, the transition ‘comprising’ creates a presumption that the recited elements are only a part of the device, that the claim does not exclude additional, unrecited elements.” Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001). Claim 1 recites “configuration parameters comprising first random access parameters, for beam failure recovery.” Thus, we agree with Petitioner that the “configuration parameters comprising first random access parameters, for beam failure recovery,” can—but are not required to—include additional parameters (i.e., in addition to the recited “first random access parameters”). Here, we find that, on the current record, Petitioner has shown sufficiently Cirik’s “configuration parameters [that] may indicate the maximum number of beam of beam failure counter” are such parameters for beam failure recovery. Ex. 1005 ¶ 307; Ex. 1003 ¶ 52. As the Petition’s citations suggest, these are substantially the same as examples identified in the ’615 patent. See Pet. 15–16 (citing Ex. 1001, 63:18–23, 41:65–67; Ex. 1003 ¶ 56). Petitioner has further sufficiently shown that Cirik also discloses that as part of its beam failure recovery process, Cirik initiates certain “random access (RA) procedures.” Id. at 16 (citing Ex. 1005 ¶ 152, 161–164, Figs. 13A–C). As part of these RA procedures, we agree that Cirik discloses sending a configuration message including “one or more random access channel (RACH) parameters.” Id. (citing Ex. 1005 ¶¶ 151–154, 156, 161; Ex. 1003 ¶ 57). As Petitioner explains, “[t]he RACH parameters included in a configuration message can include indications of ‘one or more Physical RACH (PRACH) occasions available for transmission’ of a random-access preamble message and information for determining the power level of the transmission.” Id. (citing Ex. 1005 ¶¶ 153, 154). Cirik explains this “contention-free random access procedure . . . may be initiated for beam failure recovery.” Ex. 1005 ¶ 162; see also Pet. 20–23 (discussing in detail in the context of limitation [1b] the RA procedures for beam failure recovery in Cirik). We note that nothing in the claim language requires that the configuration parameters must be received in a single message. Thus, there is nothing improper about the Petitioner identifying multiple messages as including the “configuration parameters, comprising first random access parameters, for beam failure recovery” (i.e., Cirik’s configuration parameters that indicate the maximum number of beam failures and Cirik’s configuration parameters for random access processes used in connection with beam failure recovery), as Patent Owner suggests. Prelim. Resp. 4 (“But at no point does Petitioner assert that the configuration message for first random access parameters is included within the ‘one or more configuration parameters [that] indicate the maximum number of beam failures’ that it identifies for the ‘configuration parameters’ limitation.”). Accordingly, for purposes of institution, we find that Petitioner has shown sufficiently that Cirik discloses this limitation.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,637,615 - PTAB · Nov 14, 2025 · IPR2025-00910 · APJ Kevin W Cherry · IPR · Institution
Instituted IPR of claims 1–19 on all asserted grounds after finding a reasonable likelihood that Apple would prevail on at least one claim, including over Cirik alone.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented demonstrates a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’128 patent. Accordingly, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Akl, Petitioner contends that an ordinarily skilled artisan for the ’128 patent “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology.” Pet. 4. Petitioner additionally contends that “[a]dditional years of experience could substitute for an advanced-level degree (and vice versa).” Id. Patent Owner states that “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 2. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’128 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no formal construction are presently necessary for purposes of demonstrating obviousness of the Challenged Claims based on [the asserted grounds].” Pet. 9. Patent Owner does not at this time address claim construction. See generally Prelim. Resp. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We note, however, there may be some claim terms below whose constructions the parties may wish to address during trial.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“On the current record, we find that Petitioner has shown sufficiently that Cirik teaches the claimed “first configuration parameters for beam failure recovery, comprising first random access parameters.” See Pet. 13– 17. Patent Owner argues that Petitioner fails to address this limitation, but we disagree. Prelim. Resp. 3. As we have set out above, Petitioner has provided a detailed mapping of what disclosures of Cirik (and Cirik’s provisional) on which it relies. Based on the current record, we see nothing incorrect in Petitioner identifying multiple parameters as making up the “first configuration parameters for beam failure recovery.” As the plain language of claim 1 makes clear, there are “parameters”—plural—not just one. We also find, on the current record, that those “parameters” are not limited by the claim to only “random access parameters.” The disputed claim limitation uses the transitional phrase “comprising” in reciting the “first configuration parameters for beam failure recovery.” As courts have explained, “[i]n the parlance of patent law, the transition ‘comprising’ creates a presumption that the recited elements are only a part of the device, that the claim does not exclude additional, unrecited elements.” Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001). Claim 1 recites “first configuration parameters for beam failure recovery, comprising first random access parameters.” Thus, we agree with Petitioner that the “first configuration parameters for beam failure recovery” can—but are not required to—include additional parameters (i.e., in addition to the recited “first random access parameters”). Here, we find that, on the current record, Petitioner has shown sufficiently Cirik’s “one or more configuration parameters [that] may indicate the maximum number of beam of beam failure counter” is such a parameter for beam failure recovery. Ex. 1005 ¶ 307; Ex. 1003 ¶ 52. As Petitioner correctly notes, these are substantially the same as examples of “first configuration parameters for beam failure recovery” identified in the ’128 patent. See Pet. 15 (citing Ex. 1001, 63:9–12, 41:65–67; Ex. 1003 ¶ 53). Petitioner has further sufficiently shown that Cirik also discloses that as part of its beam failure recovery process, Cirik initiates certain “random access (RA) procedures.” Id. (citing Ex. 1005 ¶ 152, 161–164, Figs. 13A– C). As part of these RA procedures, we agree that Cirik discloses sending a configuration message including “one or more random access channel (RACH) parameters.” Id. (citing Ex. 1005 ¶¶ 151–154, 156, 161; Ex. 1003 ¶¶ 54–55). As Petitioner explains, “[t]he RACH parameters included in a configuration message can include indications of ‘one or more Physical RACH (PRACH) occasions available for transmission’ of a random-access preamble message and information for determining the power level of the transmission.” Id. (citing Ex. 1005 ¶¶ 153, 154). Cirik explains this “contention-free random access procedure . . . may be initiated for beam failure recovery.” Ex. 1005 ¶ 162; see also Pet. 20–23 (discussing in detail in the context of limitation [1b] the RA procedures for beam failure recovery in Cirik). We note that nothing in the claim language requires that the first configuration parameters must be received in a single message. Indeed, the claim language explicitly permits “one or more messages.” Thus, there is nothing improper about the Petitioner identifying multiple messages as including the “first configuration parameters for beam failure recovery” (i.e., Cirik’s configuration parameters that indicate the maximum number of beam failures and Cirik’s configuration parameters for random access processes used in connection with beam failure recovery), as Patent Owner suggests. Prelim. Resp. 4 (“But at no point does Petitioner assert that the configuration message for first random access parameters is included within the ‘one or more configuration parameters [that] indicate the maximum number of beam failures’ that it identifies for the ‘first configuration parameters’ limitation.”). Accordingly, for purposes of institution, we find that Petitioner has shown sufficiently that Cirik discloses this limitation.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,979,128
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.