- PTAB · Oct 3, 2025 · IPR2025-00680 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR of claims 2 and 3 on all grounds in the Petition and granted Nintendo’s motion to join IPR2024-00807, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“II. ANALYSIS A. Institution of Inter Partes Review We instituted an inter partes review in the Apple IPR on all challenged claims and all asserted grounds of unpatentability. Apple IPR, Paper 10 (institution decision); see also Apple IPR, Paper 2 (the “Apple Petition”). Petitioner here challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the Apple IPR. Compare Pet. 2, with Apple Petition 1; see also Mot. 1 (asserting the instant “Petition is substantively identical to Apple Inc.’s petition (‘Apple Petition’) in the Apple IPR, including that it relies on the same expert declaration,” and asserting “the same grounds presented in the Apple IPR”). As indicated, Petitioner also relies on the same declarant as did the petition in the Apple IPR. Mot. 1; compare Ex. 1003 (Hannaford Declaration), with Apple IPR, Ex. 1003 (same). Because the grounds of unpatentability in the instant Petition are identical to those in the Apple IPR and for the same reasons stated in our Decision to Institute in the Apple IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See Apple IPR, Paper 10 (analyzing challenges in the Apple Petition).” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition (1) is substantially identical to the Apple Petition, (2) contains the same grounds based on the same evidence, and (3) relies on the same declaration, the Hannaford Declaration (Ex. 1003). Mot. 1, 4. Petitioner represents that “joinder will not negatively impact the Apple IPR trial schedule” and “expressly consents to the existing trial schedule.” Id. at 10; see also id. at 7 (“Proceeding with a consolidated inter partes review would avoid potential inconsistency, promote efficient review of the same claims for the same patent under the same grounds, and would result in a final written decision without delay.”). Petitioner also represents that as “long as Apple remains in the joined IPR, Nintendo remains in a limited ‘silent understudy’ role that does not actively participate in the IPR.” Id. at 8. The record supports Petitioner. In addition, the final written decision in the Apple IPR is due to issue on or before October 15, 2025, with the Oral Hearing complete and no further briefing due. See IPR 2024-00807, Paper 15 (Oral Hearing Transcript); Paper 18, 2–3. Therefore, as Petitioner argues, joinder by Petitioner will have little or no impact on the trial schedule in the Apple IPR. On the other hand, if the Board denies joinder, Petitioner submits that it “intends to file a separate petition for IPR (‘Second Petition’) that includes grounds in addition to some (or all) of the grounds in the Apple IPR.” Mot. 14.” slip op. at 10
NonePatents in suitUS 8,860,337 - PTAB · Jul 10, 2025 · IPR2025-00175 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board instituted review of claims 1–17 on all asserted grounds, finding a reasonable likelihood of unpatentability on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 (2018); see also 37 C.F.R. § 42.4 (2023). For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the patentability of at least one claim of the ’562 patent. Accordingly, we institute an inter partes review of claims 1–17 of the ’562 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had “at least a four-year degree in electrical engineering or a closely related field, and at least two years of experience in semiconductor device design,” and “[a]dditional education could substitute for professional experience and vice versa.” Pet. 6 (citing Ex. 1002 ¶¶ 80–” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“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). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Neither party proposes any explicit construction of any term. See Pet. 7 (“For the purposes of this IPR, the plain meaning of each term can be applied.”). We do not expressly construe any term for purposes of this Decision.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“On this record, we are persuaded that Petitioner adequately establishes that Usui discloses all of the limitations of claim 1. Usui discloses that aluminum or aluminum alloy layer 15 is in electrical contact with titanium underlayer 13, and titanium nitride layer 14 is located “intermediate the [titanium underlayer] 13 and the aluminum or aluminum alloy layer 15” to prevent “reaction between the aluminum layer 15 and underlayer 13.” Ex. 1004, 3:27–29, 3:38–41, 3:58–63. Usui further discloses that “a capping layer is provided above layer 15,” and that “[p]referred capping layers are titanium nitride and combinations of as layer 18 of a group IVA metal, preferably titanium with a titanium nitride layer 19.” Id. at 3:67–4:6. Usui teaches that titanium nitride layer 19 is about 150 to 800 Å thick, and that the thickness of titanium underlayer 13 is between about 90 to 110 Å. Id. at 3:31–33, 4:6–8. Usui also teaches that the interconnect metallurgy structures described therein “exhibit[] enhanced electromigration characteristics” and “are especially useful for forming electrical connections or wiring such as between active and/or passive devices of an integrated circuit structure.” Id. at 1:8–14. Usui’s description of a plurality of metal layers (layers 13–18) and a capping layer formed over the plurality of metal layers (layer 19), along with its description of the structure’s usefulness for forming electrical connections in an integrated circuit structure, is sufficient, on this record, to establish that Usui discloses “an electrode stack including a plurality of metal layers and a capping layer formed over said plurality of metal layers” as recited in claim 1. Usui’s teaching that the capping layer is a refractory metal nitride (titanium nitride) that has a thickness (150–800 Å) greater than the bottommost layer of the plurality of metal layers (layer 13, 90–110 Å), sufficiently establishes, on this record, that Usui discloses the “said capping layer consisting only of a refractory metal nitride, said refractory metal nitride forming a top of said electrical contact and having a thickness greater than that of a bottommost layer of said plurality of metal layers” limitation of claim 1.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,686,562 - Menard, Inc. v. Signify Holdings B.V.InstitutedPTAB · Feb 14, 2025 · IPR2024-01469 · APJ Steven M Amundson · IPR · Institution
The Board instituted review of claims 1–20 on all petitioned challenges and granted Menard’s motion to join the Luminex IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Here, Petitioner presents substantively identical challenges to claims 1–20 in the ’336 patent based on the same prior art, the same evidence, and the same unpatentability theories as Luminex presents in the Luminex IPR. Compare Pet. 15–89, with IPR2024-00101, Paper 1 (“Luminex Pet.”) at 15–89. According to Petitioner, the Petition differs from Luminex’s petition only because of different party names and updated sections concerning standing, related matters, real parties in interest, and counsel. Mot. 4. Because Petitioner presents substantively identical challenges to claims 1–20 in the ’336 patent based on the same prior art, the same evidence, and the same unpatentability theories as Luminex presents in the Luminex IPR, Petitioner satisfies the “reasonable likelihood” standard for instituting trial for the same reasons Luminex satisfied the “reasonable likelihood” standard for instituting trial. See Luminex Pet. 15–89; Luminex Inst. Dec. 19–64; Pet. 15–89.” slip op. at 14
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Consistent with § 315(b) and § 315(c), the Board’s rules provide that “[a]ny request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested.” 37 C.F.R. § 42.122(b). The Board’s rules also provide that § 42.101(b)’s one-year time bar “shall not apply when the petition is accompanied by a request for joinder.” Id. We instituted an inter partes review in the Luminex IPR on September 9, 2024. Luminex Inst. Dec. 1. On September 23, 2024, Petitioner filed the Petition and the Motion for Joinder. Pet. 91; Mot. 7. Under § 42.122(b), Petitioner timely filed the Petition and the Motion for Joinder. See 37 C.F.R. § 42.122(b).” slip op. at 15
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“If joined to the Luminex IPR, Petitioner agrees to take an “understudy” role and only “substantively participate” if Luminex is terminated from the Luminex IPR. Mot. 1, 5–6. Further Petitioner agrees that the following conditions will apply to it in its “understudy” role “so long as Luminex remains an active party”: (1) “all filings by [Petitioner] in the joined proceeding be consolidated with the filings of Luminex, unless a filing solely concerns issues that do not involve Luminex”; (2) Petitioner “shall not be permitted to raise any new grounds not instituted by the Board in the Luminex IPR, or introduce any argument not already introduced by Luminex”; and (3) “with regard to taking of testimony, [Petitioner] will abide by 37 C.F.R. § 42.53 or any agreement between the Patent Owner and Luminex.”” slip op. at 17
- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesOther
“5. CONCLUSION For the reasons discussed above, we determine that it is appropriate under the circumstances here to join Petitioner as a party to the Luminex IPR. See §§ III.D.2–III.D.4. The estoppel provisions of 35 U.S.C. § 315(e) will apply to Petitioner.” slip op. at 18
NonePatents in suitUS 10,299,336 - PTAB · Nov 1, 2024 · IPR2024-01010 · APJ Brian D Range · IPR · Institution
The Board instituted inter partes review of claims 1–6 and 8 on all petition grounds and granted Texas Instruments’ motion to join the NXP IPR as an understudy petitioner.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Thus, for the same reasons set forth in our institution decision in the NXP IPR, we determine that the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in showing that claims 1–6 and 8 are unpatentable. See NXP Dec. Accordingly, we institute an inter partes review of the same claims on the same grounds as the ones on which we instituted review in the NXP IPR. 35 U.S.C. § 314(a).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Petitioner agrees that, if joinder is granted, it will have an “understudy role.” Id. at 2–3, 6–8. Petitioner agrees to various restrictions as an understudy. Id. Along these lines, Petitioner will abide by the following conditions so long as NXP is actively participating in this proceeding: (a) TI shall not make any substantive filing and shall be bound by the filings of Petitioner NXP, unless a filing concerns termination and settlement, or issues solely involving TI; (b) TI shall not present any argument or make any presentation at oral argument unless an issue solely involves TI, or when addressing Board-approved motions that do not affect Petitioner NXP or its respective position; (c) TI shall not seek to cross-examine or defend the cross-examination of any witness, unless the topic of cross-examination concerns issues solely involving TI; (d) TI shall not seek discovery from Patent Owner on issues not solely involving TI; (e) TI will not rely on expert testimony beyond that submitted by Petitioner NXP unless Petitioner NXP is terminated from the case. If Petitioner NXP is not terminated from the case, TI agrees to rely entirely on, and be bound by, the expert declarations and depositions in the NXP IPR. Mot. 6–7. In sum, TI “will not assume an active role unless Petitioner NXP ceases to participate in the proceeding.” Mot. 2.13 The conditions above mean that joinder will have no impact on the NXP IPR trial schedule and will not complicate the NXP IPR briefing or discovery. These understudy provisions are consistent with the provisions imposed by, for example, Ecobee Techs. ULC v. EcoFactor, Inc., IPR 2022-01460, IPR2022-00473, Paper 7 (PTAB Jan. 24, 2023) and Apple Inc. v. INVT SPE LLC, IPR2019-00959, Paper 8 (PTAB May 30, 2019).” slip op. at 6
NonePatents in suitUS 7,345,245 - PTAB · Oct 21, 2024 · IPR2024-00697 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–5 on all petitioned grounds, finding a reasonable likelihood that Apple would prevail on at least one claim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of systems incorporating linear actuators; additional years of experience could substitute for the degree. Pet. 4 (citing Ex. 1003 ¶ 30–31). Patent Owner contends a POSITA would have had (1) a bachelor’s degree in electrical engineering, mechanical engineering, or a comparable field of study, and (2) at least two years of professional experience with electro-mechanical control systems, or other similarly relevant industry experience. Prelim. Resp. 3. Additional relevant industry experience may compensate for lack of formal education or vice versa. Id. Patent Owner further contends this is similar to Petitioner’s POSITA contention. Id. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’767 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner contends “the preamble of claim 1 is limiting based on Petitioner’s assertion in the District Court and based on the District Court’s order.” Prelim. Resp. 6. Patent Owner also contends “the District Court agreed with Patent Owner and ordered that the ‘control component’ term has its plain and ordinary meaning and is not subject to means-plus-function treatment.” Id. Patent Owner finally contends “there is no need for the Board to make claim construction determinations about Section 112, Paragraph 6 to decide institution.” Id. As to the preamble, we agree, for purposes of this decision, that claim 1’s preamble is limiting. The parties agreed that this preamble is limiting in the District Court case. Dist. Ct. Const. 10.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed board ownTerm construed patent owner constructionMixed
“As to the “driving component” recitation, the parties agreed to a construction in the District Court case. Dist. Ct. Constr. 11. For purposes of this Decision, we adopt the parties’ agreed construction. Pet. 6. The parties agreed the “driving component” term is a means-plus-function term. Dist. Ct. Constr. 11. The function is “drives the moveable component in each of two opposite directions.” Id. Corresponding structure includes “coils 420, 514, 626, 1202, 1204, 1302, 1304, 1412, 1414, 1510 (also shown in Figs. 16–17); electromagnets shown in Figs. 10–11; and equivalents thereof.” Id. As to “control component,” the District Court held that the term is not a means-plus-function term because the claim defines the term structurally by requiring a “microprocessor,” “control program,” and “switch.” Dist. Ct. Constr. 17–22. For purposes of this Decision, we agree with the District Court that means-plus-function treatment does not apply to the “control component” recitation because structure in claim 1 defines the component. Given the context provided by claim 1 as a whole, a person having ordinary skill in the art would have understood the “control component” as identifying a specific structure (requiring a microprocessor, control program, and switch as claim 1 recites). See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (holding that the means-plus-function inquiry depends on “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for a structure”).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“With respect to other claim terms, Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim based on the ordinary and customary meaning of these terms. Thus, no other claim terms require express construction for purposes of this Decision. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,093,767 - PTAB · Sep 9, 2024 · IPR2024-00101 · APJ Steven M Amundson · IPR · Institution
Instituted IPR of claims 1–20 on all petition challenges because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- Director reviewDirector review, grantedGranted
“On August 20, 2024, the Director granted Petitioner’s request and vacated the panel’s decision denying institution. Paper 12, 6. In doing so, the Director determined that Menard is not a real party in interest or a privy of Petitioner under § 315(b) and that § 315(b) does not bar institution. Id. at 5. The Director also determined that § 315(a) “does not apply to the ‘cross-claims’ asserted by Petitioner” and that § 315(a) does not bar institution. Id. Additionally, the Director declined to exercise discretion under § 314(a) to deny institution in view of the Wisconsin case because Petitioner submitted a Sotera stipulation. Id.; see Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)1 at 3, 7–8 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Further, the Director remanded the case to the panel and instructed the panel “to determine whether the Petition presents a reasonable likelihood of prevailing with respect to at least one of the challenged claims under 35 U.S.C. § 314(a), and to determine whether to institute inter partes review accordingly.” Paper 12, 5–6. As noted above and explained in the patentability analysis below, we determine that there is a reasonable likelihood Petitioner would prevail with respect to at least one of the challenged claims. See supra § I; infra §§ III.E–III.H.” slip op. at 4
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“On August 20, 2024, the Director granted Petitioner’s request and vacated the panel’s decision denying institution. Paper 12, 6. In doing so, the Director determined that Menard is not a real party in interest or a privy of Petitioner under § 315(b) and that § 315(b) does not bar institution. Id. at 5. The Director also determined that § 315(a) “does not apply to the ‘cross-claims’ asserted by Petitioner” and that § 315(a) does not bar institution. Id. Additionally, the Director declined to exercise discretion under § 314(a) to deny institution in view of the Wisconsin case because Petitioner submitted a Sotera stipulation. Id.; see Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)1 at 3, 7–8 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)).” slip op. at 4
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“On August 20, 2024, the Director granted Petitioner’s request and vacated the panel’s decision denying institution. Paper 12, 6. In doing so, the Director determined that Menard is not a real party in interest or a privy of Petitioner under § 315(b) and that § 315(b) does not bar institution. Id. at 5. The Director also determined that § 315(a) “does not apply to the ‘cross-claims’ asserted by Petitioner” and that § 315(a) does not bar” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherDecided for petitioner
“On August 20, 2024, the Director granted Petitioner’s request and vacated the panel’s decision denying institution. Paper 12, 6. In doing so, the Director determined that Menard is not a real party in interest or a privy of Petitioner under § 315(b) and that § 315(b) does not bar institution. Id. at 5. The Director also determined that § 315(a) “does not apply to the ‘cross-claims’ asserted by Petitioner” and that § 315(a) does not bar institution. Id. Additionally, the Director declined to exercise discretion under § 314(a) to deny institution in view of the Wisconsin case because Petitioner submitted a Sotera stipulation. Id.; see Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)1 at 3, 7–8 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)).” slip op. at 4
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,299,336 - Apple Inc. v. RJ Technology, LLCInstitutedPTAB · Aug 20, 2024 · IPR2024-00597 · APJ Jon B Tornquist · IPR · Institution
The Board instituted review of claims 1–18 on all asserted grounds and granted Apple’s motion to join IPR2023-01183.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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). Having considered the arguments and evidence presented by Petitioner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’641 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’641 patent on all the grounds of unpatentability set forth in the Petition. And, for the reasons set forth below, we grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“In considering a motion for joinder, and whether such joinder is appropriate, the Board may consider “whether a new ground of unpatentability is raised in the second petition, how the cost and schedule of the first proceeding will be impacted if joinder is granted, and whether granting joinder will add to the complexity of briefing and/or discovery.” Patent Trial and Appeal Board Consolidated Trial Practice Guide November 20197 at 76 (citing Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. at 11–12 (citing Ex. 1002 ¶¶ 50–51). Upon review of the prior art of record and the Petitioner’s arguments, we adopt Petitioner’s uncontested definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the ’641 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner provides constructions for the terms “A method for improving . . . characterized in that,” “ratio of positive electrode material to negative electrode material as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V” (claim 5), “as calculated by a specific capacity with a charge voltage limited to 4.2 V” (claim 1), and “at least 7500 of capacity” (claim 11). Pet. 8–11. For purposes of this decision, we determine that no claim terms require express construction. See 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) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 7,749,641 - Apple Inc. v. THL Holding Company, LLCInstitutedPTAB · Jul 25, 2024 · IPR2024-00399 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1–19 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been shown obvious over Kalliola, Turunen, Oswald, Vauclair, and Kalayjian.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] 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) (2018). “When 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) (2023). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims, and we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“1 Patent Owner does not request that we exercise our discretion to deny institution of either parallel petition. On the present record, we find that Petitioner’s explanation of the need for two parallel petitions is sufficient to justify not exercising discretion to deny institution in either case. The parallel petitions challenge different sets of claims of the ’246 patent, and there are a large number of claims challenged collectively between the two petitions.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“to “a bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field and 2-4 years of experience with wireless ranging and positioning systems, wireless communication devices, and associated computer programming.” Pet. 4 (citing Ex. 1003 ¶ 35). Patent Owner does not dispute Petitioner’s assertion on the present record. Prelim. Resp. 1–22. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’246 patent and the asserted prior art. This definition is also supported by the testimony of Dr. Buehrer. See Ex. 1003 ¶ 35.10” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Petitioner proposes construing two terms. Pet. 5–6 (citing Ex. 1011, 6–11). First, Petitioner proposes that we construe “[t]ime of flight calculations” as “[d]etermining the amount of time between when a signal is transmitted and when a reply signal is received.” Id. at 6. Second, Petitioner proposes that we construe “[s]ignal delay” as “[d]ifference in time between when a signal is received at two or more antennas.” Id. On the present record, Patent Owner does not dispute these proposed constructions. Prelim. Resp. 1–22. For the purposes of this Decision, we adopt the constructions proposed by Petitioner. Those constructions are supported by briefing in the parallel district court case, in which they were proposed by Patent Owner. Ex. 1011, 6–11.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,350,246 - PTAB · May 12, 2023 · IPR2023-00129 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 21, 22, 25, 26, 28–30, 32–36, 40–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 on all petition grounds, and granted …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unpatentability as the ones on which we instituted review in the Cree IPR. Compare Pet. 10–116, with Cree Dec. 10, 45–46. Indeed, Petitioner contends that the Petition and evidence Petitioner relies upon is “identical to the grounds in the Cree IPR petition.” Mot. 5. Petitioner acknowledges that the Petition relies on a different expert; however, Petitioner asserts that “the supporting declaration of Dr. Bretschneider submitted by Feit Electric adopts the opinions of Cree Lighting’s expert, Dr. Lebby, in full, with minor clarifications . . . that are immaterial to the broader analysis.” Id. at 8, n. 1; see also Ex. 1021 (declaration of Dr. Bretschneider). Petitioner further states that it will rely on the declaration of Dr. Bretschneider “only in the event that Cree Lighting is terminated from the proceedings.” Mot. 8, n. 1. Patent Owner waives its preliminary response, and it does not dispute Petitioner’s arguments or evidence. See generally Waiver.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition in this case asserts the same unpatentability grounds on which we instituted review in the Cree IPR. See Mot. 5. Petitioner states that its Petition is “essentially a copy of the Cree Lighting Petition.” Id. Thus, this inter partes review does not present any ground or matter not already at issue in the Cree IPR.” slip op. at 6
NonePatents in suitUS 6,465,961 - PTAB · May 12, 2023 · IPR2023-00123 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 21–91 listed in the order on all petition grounds and granted joinder in IPR2022-00847.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. INSTITUTION OF INTER PARTES REVIEW The Petition in this proceeding asserts the same grounds of unpatentability as the ones on which we instituted review in the Cree IPR. Compare Pet. 12–124, with Cree Dec. 10, 45–46. Indeed, Petitioner contends that the Petition and evidence Petitioner relies upon is “identical to the grounds in the Cree IPR petition.” Mot. 1. Petitioner acknowledges that the Petition relies on a different expert; however, Petitioner asserts that “the expert declaration of Dr. Christian Wetzel (Ex. 1021, “Wetzel Decl.”), [] is substantively identical to the declaration put forth in the Cree IPR.” Id. at 2. Petitioner further states that Dr. Wetzel agrees with the opinions of Cree’s expert and “adopts them as his own.” Id. at 2, n. 1.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition in this case asserts the same unpatentability grounds on which we instituted review in the Cree IPR. See Mot. 5. Petitioner states that it uses “the same arguments, analysis, evidence, and grounds of unpatentability as the Cree IPR.” Id. Thus, this inter partes review does not present any ground or matter not already at issue in the Cree IPR. Petitioner agrees that, if joinder is granted, it will have a “true understudy role.” Reply. 1–2. Petitioner agrees to various restrictions as a true understudy and further agrees to any further limitations the Board may impose. Reply 2; Mot. 7–8 (“Petitioner will also abide by any additional conditions the Board deems appropriate”). Along these lines, Petitioner will abide by the following conditions so long as Cree is actively participating in this proceeding: 1. Petitioner will not take any depositions or otherwise participate in the proceeding (Reply 2);” slip op. at 6
NonePatents in suitUS 6,465,961
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.