• Tanklogix, LLC v. Sitepro, Inc.Institution denied
  PTAB · Oct 10, 2025 · IPR2025-00653 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution on all claims because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.

  RulingsInstitution decision

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

    “An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties’ proposed levels of ordinary skill in the art are similar, although Patent Owner proposes two years of experience along with a bachelor’s degree whereas Petitioner proposes “significant” experience. Patent Owner also proposes an alternative with more extensive experience in lieu of a bachelor’s degree. Although we find Petitioner’s proposed qualifications acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of ordinary skill necessary to understand and implement the teachings of the ’504 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Our analysis and findings herein, however, do not turn on any differences in the parties’ proposed qualifications.” slip op. at 12

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

    “Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. 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)). The parties assert that each claim term should be construed in accordance with its plain and ordinary meaning. Pet. 9; Prelim. Resp. 4 (citing Ex. 2009 ¶ 72); see Ex. 1002 ¶ 22 (opining the same). And, in the respective claim construction sections of their briefs, the parties do not propose any claim terms for express construction. We agree with the parties that no claim terms require express construction to resolve the controversy before us. See Realtime Data, 912 F.3d at 1375.” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Ex. 1002 ¶ 47. As reflected above, Dr. Wooley’s testimony as to element [1.2] does not even assert that Cardamone discloses a tank, let alone one or more sensors disposed at a tank as recited in element [1.2]. Thus, Dr. Wooley’s testimony does not support Petitioner’s argument on this issue.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,726,504
• Tanklogix, LLC v. SiteproInstitution denied
  PTAB · Oct 10, 2025 · IPR2025-00650 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 18–32 and 34 were unpatentable over Kahn or Kahn and Gutierrez.

  RulingsInstitution decision

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

    “information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’871 patent. Accordingly, for the reasons that follow, we decline to institute an inter partes review of claims 18–32 and 34 of the ’871 patent.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The respective proposed levels of qualifications for a person of ordinary skill in the art are similar, with Patent Owner proposing two years of experience compared to Petitioner proposing significant experience with remotely controlling fluid-handling devices, like SCADA systems. Patent Owner also proposes more extensive experience in lieu of educational experience. While we find Petitioner’s proposed qualifications to be acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of skill necessary to understand and implement the teachings of the ’871 patent and the asserted prior art. Our analysis and findings herein, however, do not turn on any differences in the qualifications adopted.” slip op. at 8

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

    “We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. 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 10

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

    “actuators and the remote control of fluid handling devices, including the receipt with the user-interface module of “a user command to actuate an actuator via a presented control interface” (limitation [18.7]) and “account authorized to send commands to remotely control fluid handling devices” (limitation [18.11]). We agree with Patent Owner that the Petition fails to demonstrate that Kahn discloses or teaches these limitations because the evidence does not provide support that there is remote control of fluid handling devices or the use of a user command on a control interface to send a command to a fluid handling device, for instance. Kahn is directed to providing access to fluid sensing data and analyzing and providing visual information on that data, but we do not discern that it teaches or discloses the capability to remotely control fluid handling devices. See, e.g., Ex. 1005, code (54), 1:27–36, 2:50–3:2. More specifically, the Kahn disclosures that Petitioner repeatedly relies upon for allegedly teaching this control are deficient. See Ex. 1005, 10:62–67, 14:35– 15:2, 15:62–16:32; see also Pet. 12–14, 16–18. Kahn discloses that “the communication unit 112B can include on-site alerts such as optical (indicator lights), audible alerts (e.g., alarm sounds), tactile (e.g., vibration of the unit) or can be interfaced to an appropriate control valve for simply shutting off the supply of fluid upon the detection of emergency events, for instance.” Ex. 1005, 10:62–67. Communication unit 112B is part of the local “sensor unit,” wherein the detection conditions determined by the sensor are communicated to remote devices by communication unit 112B. See id. at 3:31–33, 5:62–6:2, 6:27–35, 7:33–37, 13:7–12, Figs. 1A–1C. Kahn discloses that the sensor units, which include communication units 112B, can be located near shut-off valves and can communicate with distant locations. See id. at 11:1–13. There are no disclosures, however, in the above passages that there is remote control of fluid handling devices, that there is a user command on a control interface that actuates an actuator, or that there is a command sent to the facility actuators via a network connection, as required in limitations [18.5]–[18.7] and [18.9]–[18.12], respectively. Rather, the disclosure indicates that the communication unit 112B includes on-site alerts and that the local (non-remote) communication unit 112B can be interfaced with the control valve.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,488,871
• Intel Corporation / Lenovo (United States) Inc. et al. v. Collision Communications, Inc.Institution denied
  PTAB · May 28, 2025 · IPR2025-00301 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution of review for claims 1–11, 16, and 21 under § 314(a), finding the Fintiv factors favored discretionary denial, and denied joinder.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “2026. This date is nearly five months prior to the date on which the final written decision would be due if trial were instituted in this proceeding. And, even if we assume Petitioner’s alleged February–March 2026 trial date, this date too is several months prior to the projected final written decision deadline. As such, it is unlikely that a final written decision in this proceeding would issue before trial in the district court, unless the trial was delayed or rescheduled for a later time. Thus, we find this factor weighs in favor of exercising our discretion to deny institution. See ARM Ltd. v. Daedalus Prime LLC, IPR2025-00207, Paper 10 at 2 (May 16, 2025) (Before the Office of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office) (exercising discretion to deny institution with the same relative timing between district court trial and final written decision deadline).” slip op. at 13

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied

    “presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Institution of inter partes review, however, is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons discussed below, we exercise discretion pursuant to 35 U.S.C. § 314(a) not to institute inter partes review. Additionally, for the same reasons and because institution was denied in IPR2024-01248, we deny Petitioner’s Motion for Joinder. See 35 U.S.C. § 315(c) (“[T]he Director . . . may join as a party . . . any person who properly files a petition under section 311 that the Director . . . determines warrants the institution of an inter partes review under section 314.”).” slip op. at 3

  Discretionary denial
  Patents in suitUS 9,814,071
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution denied
  PTAB · Mar 21, 2025 · IPR2024-01250 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–5, 7, 9–16, or 20 unpatentable over the asserted grounds.

  RulingsInstitution decision

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

    “An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Min’s testimony, proposes that a person of ordinary skill in the art at the time of the invention would have had “at least a bachelor’s [degree] in [electrical engineering, computer engineering, or computer science], physics, or equivalent, and two years of experience with cellular telecommunications, radio-access network architectures, protocols and signal propagation in wireless networks.” Pet. 3 (citing Ex. 1003 ¶ 59). Dr. Min testifies that “[a]dditional education could substitute for professional experience and vice versa.” Ex. 1003 ¶ 59. Additionally, Petitioner contends that Dr. Min “exceeded this level of experience by the priority date.” Pet. 3 (citing Ex. 1010 (curriculum vitae of Dr. Min)). In its Preliminary Response, Patent Owner does not take a position on the relevant level of ordinary skill in the art. See generally Prelim. Resp. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’946 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10

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

    “Neither party contends that any claim terms require an express construction to resolve the present controversy. Pet. 8 (“For purposes of this Petition only, Petitioner does not believe any terms require a formal construction.”); see generally Prelim. Resp. Nonetheless, Petitioner explains that the Petition is structured such that “Ground 1 is based on Patent Owner’s infringement contentions in the district court litigation, where the claimed ‘MUD module’ is generally mapped to multiple-input multiple-output (MIMO) receivers in a wireless network.” Pet. 2. Petitioner contends that “[u]nder this broad interpretation of a ‘MUD module,’ Walton’s MIMO receiver renders every challenged claim obvious.” Id. In contrast to Ground 1, the Petition states that “Ground 2 is based on the plain meaning of ‘MUD module,’ which is a component that detects, separates, and decodes signals from multiple users transmitting simultaneously over the same frequency band.” Id. Petitioner contends that, “[a]pplying the correct meaning of the term, Walton’s MIMO receiver does not necessarily comprise a MUD module.” Id. Therefore, Petitioner explains that “Ground 2 combines Walton with Learned, which expressly discloses [a] multi-user detector, and thus renders every challenged claim obvious in combination with Walton.” Id. at 2–3.7 In other words, the Petition presents Ground 1 and Grounds 2/3 as alternatives depending on the meaning of 7 Although not specifically relevant to claim construction, Petitioner explains that “Ground 3 further combines Walton and Learned with Quigley, to the extent Patent Owner argues Walton does not disclose providing a burst control input.” Pet. 3. “MUD module,” where Ground 1 is based on Petitioner’s understanding of Patent Owner’s interpretation of the term and Grounds 2 and 3 are based on Petitioner’s interpretation of the term as having its plain meaning. Petitioner further contends that “[e]very other claim term carries its ‘ordinary and customary meaning’ . . . .” Id. at 8. Although Petitioner presents a potential dispute regarding the meaning of “MUD module,” we need not construe this term expressly because the determination we reach herein does not depend on which meaning MUD module is applied. Accordingly, we do not construe any claim terms expressly because express constructions are not necessary to resolve the controversy before us. See Realtime Data, 912 F.3d at 1375.” slip op. at 12

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “IV. DISCRETIONARY DENIAL Patent Owners contends that the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 9 (PTAB Mar. 20, 2020) (precedential), weigh heavily in favor of discretionary denial. Prelim. Resp. 40–46; Paper 10. Petitioner disagrees. Pet. 74–77; Paper 9. In light of the conclusion reached above, we need not address the parties’ arguments regarding discretionary denial.” slip op. at 25

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,089,946
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution denied
  PTAB · Mar 21, 2025 · IPR2024-01248 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood of proving claims 1–11, 16, and 21 unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’071 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 12

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

    “Neither party proposes a specific construction of any claim term, although Petitioner contends each term should be construed according to its plain and ordinary meaning. Pet. 16; see generally Prelim. Resp. Accordingly, we need not construe any claim terms expressly because the meaning of the terms is not in dispute and an express construction is not necessary to resolve the controversy before us.” slip op. at 13

  • BurdenNot shown unpatentable

    “We find the Petition lacking in particularity because it does not clearly identify what aspect of Jin is alleged to teach the unique signal parameters (or unique estimated signal parameters) recited in claim 1. See, e.g., 35 U.S.C. § 312(a)(3) (“A petition filed under section 311 may be considered only if — (3) the petition identifies, in writing and with particularity, . . . the evidence that supports the ground for the challenge to each claim . . . .”). First, as reflected above, the Petition asserts that something called a “unique pilot parameter” teaches the recited unique estimated signal parameters. But “unique pilot parameter” is not a term or phrase recited in Jin. See Prelim. Resp. 19 (arguing the same). So, when Petitioner states “Jin discloses that the base station uses the unique pilot parameter (i.e., ‘unique estimated signal parameters’) to ‘identify which user (i.e., mobile terminal) has transmitted the received data,’” it is not clear what element in Jin Petitioner intends to identify by the term “unique pilot parameter.” Dr. Min’s testimony does not help resolve the ambiguity in the Petition. In particular, Dr. Min also refers to a “unique pilot parameter (i.e., ‘unique signal parameter’) for each user.” Ex. 1003 ¶ 89. But, as noted above, Jin does not disclose an element referred to as a “pilot parameter” and it is not clear what element Dr. Min intended to identify in Jin.8” slip op. at 18

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,814,071
• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Institution denied
  PTAB · Mar 14, 2025 · IPR2024-01449 · APJ Justin T Arbes · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1 and 2 were unpatentable under any of the four asserted obviousness grounds.

  RulingsInstitution decision

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

    “inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” where “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Pet. 29 (citing Ex. 1024 ¶ 25). Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 17. Based on the record presented, including our review of the ’463 patent and the types of problems and solutions described in the ’463 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 8

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

    “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 “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary.” Pet. 25–26. 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. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted) (emphasis added)).” slip op. at 9

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

    “Further, because Bowen’s disclosed barrier height is outside the claimed range, Petitioner relies on Soukup’s purported teaching of a barrier height of “about 0.33 eV” and contends that a person of ordinary skill in the art would have been motivated to “achieve” that barrier height for the MgO barrier of Bowen’s device. Id. at 34–36. The data that Petitioner relies on from Soukup for the “about 0.33 eV” barrier height, though, was determined using the slope of an Arrhenius plot, not Simmons’ formula. Ex. 1028, 3229 (Abstract), 3231–33, Table I. In Soukup, apparent barrier heights for the samples were determined using (1) the slope of an Arrhenius plot, and (2) the zero-field intercept of the straight line logI versus V1/2 plot. Id. at 3229 (Abstract), 3230–32, Fig. 3, Table I. Reproduced below is Table I of Soukup, as annotated by Patent Owner (Prelim. Resp. 39): Annotated Table I of Soukup includes the results of analyses of sample test data, with the column highlighted in yellow showing the barrier heights obtained by a zero-field intercept method and the column highlighted in blue showing barrier heights obtained from the slope of an Arrhenius plot. See Ex. 1028, 3233; Prelim. Resp. 38–39. Dr. Bokor testifies that “Soukup disclosed that Simmons’ formula was used to approximate tunnel barrier height” and “[o]ne of skill would have understood the ‘height and the bias dependence of the insulator potential-energy barrier’ [referenced in Soukup] included the tunnel barrier height.” Ex. 1024 ¶¶ 145–147 (quoting Ex. 1028, 3229; citing Ex. 1024 ¶¶ 45–49). We do not find this testimony persuasive. Although Soukup refers to “Simmons’ model” and the Simmons 1963 paper in its “Introduction,” it does not teach any calculation using Simmons’ formula to obtain a barrier height within the claimed range. See Ex. 1028, 3229, 3236 n.1; Prelim. Resp. 63. Soukup plainly recognizes that there are methods of calculating barrier height other than Simmons’ formula, and discusses at length its calculations using two such methods: the Arrhenius plot method and the zero-field intercept method. See, e.g., Ex. 1028, 3229 (Abstract) (“These results . . . indicate a potential barrier height of about 0.72 eV when determined from the zero-field intercept of the straight line logI vs V1/2 plot and about 0.33 eV when obtained from an Arrhenius plot.”), 3232–33. Petitioner does not address whether the 0.33 eV barrier height it relies on from Soukup (determined using the Arrhenius plot method) would still be within the claimed range if calculated using Simmons’ formula. See Prelim. Resp. 63. Nor does Petitioner rely on any values from Soukup’s disclosure that would be used as the variables in Simmons’ formula—Petitioner relies solely on Bowen. See Pet. 39–42. Thus, Petitioner’s argument that Bowen and Soukup teach a barrier height within the claimed range, obtained using equation (1), is not persuasive. See id. at 34–42.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,123,463
• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Institution denied
  PTAB · Mar 13, 2025 · IPR2024-01384 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

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

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’403 patent. Accordingly, for the reasons that follow, we decline to institute an inter partes review of claims 1–8 of the ’403 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had a “Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent.” Pet. 29 (citing Ex. 1024 ¶ 25). Patent Owner “does not challenge Petitioner’s POSA [person of ordinary skill in the art] definition.” Prelim. Resp. 17. In determining 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) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we adopt the assessment offered by Petitioner, as it is consistent with the ’403 patent and the asserted prior art.” slip op. at 6

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

    “Petitioner “submits the claim terms should be given their plain and ordinary meaning and no claim construction is necessary to find the claims unpatentable.” Pet. 26. Patent Owner does not address claim construction in its Preliminary Response. See generally Prelim. Resp. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. 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 7

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

    “Importantly, Soukup indicates a different relationship between the amount of oxygen vacancy defects in the barrier layer and the barrier height, depending on which method is used. Specifically, Soukup explicitly found that “[t]he apparent barrier height determined from the zero-field intercept went up for increasing oxygen pressure [(i.e., less oxygen vacancy defects)] and the barrier height determined from the Arrhenius plot went down.” Ex. 1028, 3229 (Abstract) (emphasis added).15 That disclosure is reflected in Table I, where Soukup shows the results for three fabricated samples with increasing oxygen pressure during MgO deposition. Id. at 3233. Patent Owner provides another annotated version of Table I below (Prelim. Resp. 45): 15 Soukup’s conclusion appears to refer to the trend of the respective increasing or decreasing barrier heights values under the two different mathematical analyses methods. Annotated Table I above shows (in red) that the barrier height decreases as oxygen vacancies increase (i.e., as the oxygen pressure admitted during MgO deposition, shown in the PO2 column, decreases) using the zero-field intercept method, and shows (in blue) that the barrier height increases as oxygen vacancies increase (i.e., as the oxygen pressure admitted during MgO deposition decreases) using the Arrhenius plot method. Prelim. Resp. 45. In other words, Petitioner’s alleged inverse relationship is present for the zero-field intercept method, but not for the Arrhenius plot method. See id.; Pet. 37–38. “The barrier height cannot both increase and decrease with more oxygen vacancy defects,” and Petitioner does not attempt to reconcile or explain Soukup’s disparate teachings. See Prelim. Resp. 45 (emphasis omitted). We agree with Patent Owner that Petitioner is inconsistent in relying on one method as allegedly teaching a barrier height within the claimed range, while at the same time relying on the other method for a motivation under its obviousness theory. Prelim. Resp. 45–49. If a person of ordinary skill in the art would have understood that the Arrhenius plot method was the appropriate method for determining barrier height, as Petitioner argues in asserting that Soukup teaches a barrier height of 0.33 eV, that person would have understood that “the barrier height increases as oxygen vacancies increase” (in blue above), and Petitioner’s obviousness theory of adding oxygen vacancies to lower Bowen’s barrier height is incorrect. See id. at 47. If, however, a person of ordinary skill in the art would have looked to the zero-field intercept method, that person “would have understood that all of Soukup’s tested samples . . . had barrier heights” (in yellow above) “above the claimed range of 0.2–0.5 eV.” See id. at 48. Petitioner cannot have it both ways. Based on the record before us, Petitioner has not shown sufficiently” slip op. at 23

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,884,403
• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Institution denied
  PTAB · Mar 13, 2025 · IPR2024-01385 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4 would have been obvious over the asserted combinations.

  RulingsInstitution decision

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

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’263 patent. Accordingly, for the reasons that follow, we decline to institute an inter partes review of claims 1–4 of the ’263 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art at the time of the ’263 patent would have had a “Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent.” Pet. 29 (citing Ex. 1024 ¶ 25).” slip op. at 6

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

    “We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. 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 7

  • BurdenNot shown unpatentable

    “As discussed above, Petitioner fails to explain why one of ordinary skill in the art would have selected the barrier height value it relies upon. And given the disparity of Soukup’s barrier tunnel values under the different methods of analyses, the reference is, at best, ambiguous as to which values are accurately representative of barrier height. Additionally, the evidence supports that the apparent barrier height value that Petitioner relies upon (“about 0.33 eV”) will be a different higher value, so the actual value of the barrier height is uncertain. Accordingly, we do not find that Petitioner has met its burden to sufficiently demonstrate that a person of ordinary skill in the art would have understood Soukup to teach or suggest the claimed range of limitation 1[e] in that there is insufficient evidence presented that supports that the selected Soukup barrier height value represents an accurate value.” slip op. at 20

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,319,263
• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Institution denied
  PTAB · Mar 13, 2025 · IPR2024-01386 · APJ Monica S Ullagaddi · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–6 were unpatentable on any asserted obviousness ground.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). 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 Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the parties’ arguments and the evidence of record, we determine that, for the reasons discussed herein, Petitioner does not demonstrate a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. We thus decline to institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Pet. 28–29 (citing Ex. 1024 ¶ 25). Petitioner further states that “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa” and that “[t]his level of ordinary skill would be the same if the relevant time period were around the March 12, 2004 or October 28, 2004 Japanese priority applications, or the March 10, 2005 PCT filing date.” Id. at 29 (citing Ex. 1024 ¶¶ 24–25). Patent Owner states that “[f]or purposes of this Preliminary Patent Owner Response only, Patent Owner does not challenge Petitioner’s POSA [person of ordinary skill in the art] definition because the Petition fails even if Petitioner’s POSA definition is adopted.” Prelim. Resp. 20 (citing Pet. 28–29). To resolve the institution question, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

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

    “claims using the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), as articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. See 37 C.F.R. § 42.100(b). Petitioner states that “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary to find the claims unpatentable.” Pet. 25. Patent Owner does not directly” slip op. at 7

  • BurdenNot shown unpatentable

    “Thus, the cited teachings of Sunai support Patent Owner’s position that, even if adding boron into a ferromagnetic layer of CoFe results in a higher TMR as taught by Sunai, the addition suppresses crystallization. As to the issue of the teaching of the BCC structure of the alloy, not only does Petitioner’s challenge applying Bowen and Sunai fail to demonstrate a teaching or even a suggestion of a CoFeB alloy with a BCC cited by Petitioner does not either. Only one of Petitioner’s cited pieces of underlying evidence refers to a BCC lattice structure, Parkin, but Parkin’s BCC structure is disclosed with respect to a CoFe layer, and not a CoFeB layer. Ex. 1062, 18:55–59 (“The simple cubic crystalline MgO layer thus provides a template for the formation of a thin crystalline ferromagnetic layer which has the bcc structure of CoFe and is oriented in the same (100) direction as the MgO layer.” (emphasis added)).” slip op. at 12

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,608,198
• Shenzhen Waydoo Intelligence Technology Co., Ltd. v. MHL Custom, Inc.Institution denied
  PTAB · Dec 17, 2024 · IPR2024-00998 · APJ Michael L Woods · IPR · Institution

  The Board denied joinder and denied institution on all challenged claims because the petition was time-barred under § 315(b).

  RulingsInstitution decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “establish that it is entitled to the requested relief.” See 37 C.F.R. § 42.20(c). Regarding joinder, the relevant statute provides that: If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. 35 U.S.C. § 315(c).” slip op. at 5

  • PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied

    “This statute further provides that the petition for inter partes review must be filed no later than “1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b); see also 37 C.F.R. § 42.101(b). This one-year time bar, however, “shall not apply to a request for joinder.” 35 U.S.C. § 315(b); see also 37 C.F.R. § 42.122(b).” slip op. at 5

  Discretionary denial
  Patents 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.