- Altria Client Services LLC v. Yiwu Jingangke Trading Co., Ltd.Adverse judgmentPTAB · Oct 1, 2026 · PGR2026-00035 · APJ Robert L Kinder · PGR · Adverse judgment
The Board entered adverse judgment against Patent Owner for abandoning the contest and canceled the sole challenged claim.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Pursuant to our rules, “[a]ctions construed to be a request for adverse judgment include . . . [a]bandonment of the contest.” 37 C.F.R. § 42.73(b)(4). Our prior order warned that a failure to respond would be construed as an abandonment of the contest under 37 C.F.R. § 42.73(b)(4), and that entry of judgment adverse to Patent Owner and cancellation of the challenged claim may follow. Show Cause Order, 2. Because Patent Owner did not respond by the September 15, 2026, deadline and has not entered an appearance in this proceeding, we determine that Patent Owner has abandoned the contest. Under these circumstances, we enter judgment adverse to the Patent Owner and cancel the challenged design claim.” slip op. at 2
None - PTAB · Dec 19, 2025 · IPR2025-01078 · APJ Robert L Kinder · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–12, 14–22, and 24–30, finding a reasonable likelihood that Kido anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2024). 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). Moreover, a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 584 U.S. 357, 371 (2018).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“At this juncture in the proceeding, and based on the current record, we do not agree with Patent Owner that “payout,” as claimed, should be limited to “the amount a player will win in relation to the amount wagered.” We recognize, as Patent Owner points out, that the examples provided in the Specification are listed in odds format. See id. at 2. The Specification, however, also states that “[a]ny suitable payouts can be used in some embodiments.” Ex. 1011, 5:18–21. This language suggests a broader interpretation of “payout” beyond just payout odds and we therefore decline to import the wager limitation into the claim term. Although the ’371 patent generally describes payouts in terms of odds, like 49:1, the intrinsic record lacks clear evidence necessary to limit the claims as Patent Owner proposes.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes “a person having at least a Bachelor’s Degree in electrical engineering, computer science, or computer engineering, or undergraduate training in an equivalent field and at least two years of relevant experience in electronic gaming technology.” Pet. 10 (citing Ex. 1003 ¶¶ 22–26). Petitioner further notes that “[a]dditional graduate education could substitute for professional experience, and significant work experience could substitute for formal education.” Id. Patent Owner does not dispute this level of skill. See Prelim. Resp. 13–14 (“Evolution does not set forth an alternative level of skill for a person of ordinary skill in the art”). For purposes of this Decision, we adopt Petitioner’s proposal, which comports with the teachings of the ’371 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Based on the evidence before us, we find persuasive Petitioner’s contention that Kido’s accumulated jackpot paid when landing on a star mark reads on the claimed “a first selected position . . . to have an increased payout . . . greater than a first non-selected payout.” See Pet. 25–27, 30, 35, 36. As explained above, the current record does not support limiting the term “payout” to just the amount a player will win in relation to the amount wagered. As Petitioner notes, a payout that receives Kido’s accumulated Prog bonus payout is necessarily higher than a payout that does not receive the Prog bonus. Pet. 35–36 (“had the first selected position not been randomly selected, the player would only be eligible for the basic payout”). Further, Kido even describes its bonus routines and jackpots as payouts. Kido describes, for example, that “[w]hen the privilege unit 113 obtains the win information from the special game value award mark win determining unit 112, it awards, as a payout, the game value stored in the accumulated game value memory 117” and it describes the “jackpot (JP) amount” as “a special payout.” Ex. 1007 ¶¶ 119, 129.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,756,371 - PTAB · Dec 17, 2025 · IPR2025-01072 · APJ Frederick C Laney · IPR · Institution
The Board instituted review of claims 1–3, 5–11, 13–19, and 21–24 on all asserted grounds, finding a reasonable likelihood that Kido anticipates claims 1, 9, and 17.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2024). 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). Moreover, a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 584 U.S. 357, 371 (2018).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“At this juncture in the proceeding, and based on the current record, we do not agree with Patent Owner that “payout,” as claimed, should be limited to “the amount a player will win in relation to the amount wagered.” Sur-reply 2. We recognize, as Patent Owner points out, that the examples provided in the Specification are listed in odds format. See id. The Specification, however, also states that “[a]ny suitable payouts can be used in some embodiments.” Ex. 1001, 5:16–17. This language suggests a broader interpretation of “payout” beyond just payout odds and we therefore decline to import the wager limitation into the claim term. Although the ’014 patent generally describes payouts in terms of odds, like 49:1, the intrinsic record lacks clear evidence necessary to limit the claims as Patent Owner proposes.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Reference is prior artInstituted
“Based on the evidence before us, we find persuasive Petitioner’s contention that Kido’s accumulated jackpot paid when landing on a star mark reads on the claimed “first payout . . . wherein the first payout is higher.” See Pet. 32–36. As explained above, the current record does not support limiting the term “payout” to just the amount a player will win in relation to the amount wagered. As Petitioner notes, a first payout that receives Kido’s accumulated Prog bonus payout is necessarily higher than a second payout that does not receive the Prog bonus. Id. at 35. Further, Kido even describes its bonus routines and jackpots as payouts. Kido describes, for example, that “[w]hen the privilege unit 113 obtains the win information from the special game value award mark win determining unit 112, it awards, as a payout, the game value stored in the accumulated game value memory 117” and it describes the “jackpot (JP) amount” as “a special payout.” Ex. 1007 ¶¶ 119, 129.” slip op. at 14
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 11,011,014 - PTAB · Dec 16, 2025 · IPR2025-01073 · APJ Robert L Kinder · IPR · Institution
The Board instituted IPR of claims 1–5, 7–12, 14–18, and 20 on all petitioned grounds, finding a reasonable likelihood that Kido anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2024). 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). Moreover, a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 584 U.S. 357, 371 (2018).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“At this juncture in the proceeding, and based on the current record, we do not agree with Patent Owner that “payout,” as claimed, should be limited to “the amount a player will win in relation to the amount wagered.” We recognize, as Patent Owner points out, that the examples provided in the Specification are listed in odds format. See id. at 2. The Specification, however, also states that “[a]ny suitable payouts can be used in some embodiments.” Ex. 1005, 5:13–17. This language suggests a broader interpretation of “payout” beyond just payout odds and we therefore decline to import the wager limitation into the claim term. Although the ’024 patent generally describes payouts in terms of odds, like 49:1, the intrinsic record lacks clear evidence necessary to limit the claims as Patent Owner proposes.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Based on the evidence before us, we find persuasive Petitioner’s contention that Kido’s accumulated jackpot paid when landing on a star mark reads on the claimed “first payout . . . wherein the first payout is higher.” See Pet. 33–35. As explained above, the current record does not support limiting the term “payout” to just the amount a player will win in relation to the amount wagered. As Petitioner notes, a first payout that receives Kido’s accumulated Prog bonus payout is necessarily higher than a second payout that does not receive the Prog bonus. Pet. 35. Further, Kido even describes its bonus routines and jackpots as payouts. Kido describes, for example, that “[w]hen the privilege unit 113 obtains the win information from the special game value award mark win determining unit 112, it awards, as a payout, the game value stored in the accumulated game value memory 117” and it describes the “jackpot (JP) amount” as “a special payout.” Ex. 1007 ¶¶ 119, 129. Patent Owner next contends that Kido does not disclose a first payout that is “for the spin of the roulette wheel.” Prelim. Resp. 29. Patent Owner’s argument is premised on the cumulative nature of Kido’s Prog bonus – it builds with every spin of the roulette wheel until won. Id. (“Each time the wheel is spun, 0.5% of the amount wagered is added to the progressive jackpot, and thus, the jackpot’s value reflects multiple spins of the roulette wheel.”). Thus, according to Patent Owner, the value of the jackpot is determined using multiple spins of the roulette wheel and is not “for a spin of the roulette wheel” as claimed.” Id. at 30. The claims, however, only require a first payout that is higher than a second payout. Nothing prohibits the higher payout from accumulating from prior spins of the roulette wheel because, when it is actually won, it will be for that last spin of the roulette wheel. Ex. 1005, 8:35–36 (“indicating that the first player is to be paid at the first payout for the spin of the roulette wheel”). Regardless of how Kido’s Prog bonus accumulated, it is paid for a spin of the roulette wheel – at that juncture Kido discloses each claim element. Anticipation occurs when a prior art reference discloses every element of a patent claim at a point in time, as Kido does with a single spin of the roulette wheel that pays the Prog bonus. As persuasively explained by Petitioner, “the steps of Figure 12 (including A13) occur within a single round of roulette, for a single spin of the roulette wheel, until the routine ‘returns to the step of A1 and is transited to a next game.’” Pet. 39 (quoting Ex. 1007 ¶ 233).” slip op. at 13
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 10,629,024 - PTAB · Dec 8, 2025 · IPR2025-01064 · APJ George R Hoskins · IPR · Institution
The Board instituted IPR of claims 1–18 on all four §103 grounds, finding a reasonable likelihood that Volkswagen would prevail on at least claim 1 over Weese.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A. Legal Standards — Petitioner’s Burden “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the 1 Amendments to 35 U.S.C. § 103 enacted by the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”) took effect in March 2013. The ’353 patent issued from an application filed in September 2004. See Ex. 1001, code (22). Thus, we apply the pre-AIA version of § 103. grounds for the challenge to each claim”)). This burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). B. Legal Standards — Obviousness A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness, if made available in the record, which has not happened here. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’353 patent “would have possessed at least a four-year degree in physics, biophysics, medical physics, or a related field, and two years of experience in developing and/or applying computed tomography methods,” wherein “[a]dditional education and professional experience are interchangeable.” Pet. 1; Ex. 1003 ¶¶ 54–55. “Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 2. For purposes of this Decision, we adopt Petitioner’s formulation of ordinary skill in the art, as it appears to be consistent with the ’353 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Expert testimonyOther
“unpatentable as having been obvious over Weese, including supporting testimony from Dr. Peterson. See Pet. 17–22, 26–83; Ex. 1003 ¶¶ 138–149, 159–257. Patent Owner opposes. See Prelim. Resp. 1–2, 6–7. We conclude Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions, as follows.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“(iii) Analysis Based on the present record, we determine Petitioner’s contentions regarding the third step of claim 1 are supported sufficiently by the cited disclosures in Weese and Dr. Peterson’s testimony to justify institution of review. In particular, Weese describes obtaining a plurality of second images of the patient’s internal organs (i.e., PET image I0 in Fig. 1, and PET image I10 in Fig. 3) using a second imaging technique (i.e., PET). See Ex. 1005, Figs. 1, 3, and 6, ¶¶ 47–49, 58–59, 72. In particular, PET image I0 in Figure 1 may be a reconstructed “volume image[]” composed of a plurality of “quasi two-dimensional” “slice images” that, when combined, represent a three-dimensional region inside the patient. Id. ¶¶ 48, 58, 61; see also Pet. 56–57. PET image I10 in Figure 3 may be a similarly reconstructed volume image composed of a plurality of slice images.4 See 4 We do not rely here on Petitioner’s alternative theory that Weese discloses a “plurality” of second images because PET images I0 and I10 are “superposed” images encompassing “several states of motion.” Pet. 58. Ex. 1005 ¶¶ 61, 83–84. Patent Owner’s sole opposition to Petitioner’s assertions in this regard are limited to whether Weese “obtain[s]” PET images I0 and I10 as recited in claim 1, which we address below. Also, it appears that PET images I0 and I10 are obtained while also obtaining second movement measurements of the patient’s internal organs using a second sensor system (i.e., motion acquisition unit 12 and motion sensor 15 / S1) which is independent from the PET imaging technique. See Ex. 1005, Figs. 1 and 6, ¶ 65 (“[T]he respiratory motion is determined during the acquisition of the PET projections P1 by means of a respiratory motion sensor provided on the patient and therefrom the frequency function f(r) or, more generally, a state of motion function F1 is derived for the construction of the motion model M2.”). Furthermore, Weese describes how frequency function f(r) is utilized to facilitate image comparison between CT and PET images at common motion states. See id. ¶¶ 31, 49–51, 70–71, 75–77, 79–80, 83; see also Ex. 1003 ¶¶ 214–216 (Dr. Peterson’s supporting testimony). Patent Owner’s sole opposition to Petitioner’s assertions in this regard are limited to whether Weese “obtain[s]” PET images I0 and I10 as recited in claim 1, which we address below. Patent Owner’s two opposing arguments are unavailing, based on the present preliminary record. First, Petitioner relies on reconstructed PET images I0 and I10 as satisfying the “plurality of second images” recited in claim 1, not PET projections P1 from which PET images I0 and I10 are derived. See, e.g., Pet. 56, 58 (“I0 and I10 disclose and render obvious a ‘plurality of second images’ in two ways” — “I0 and I10 may be ‘volume images’ formed using ‘known’ techniques,” and “I0 and I10 are ‘superposed’ PET images encompassing ‘several states of motion,’ which” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,265,353 - PTAB · Oct 6, 2025 · IPR2025-00812 · APJ Robert L Kinder · IPR · Institution
Instituted IPR of claims 1–28 on all petitioned grounds because the petition showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“According to Petitioner, “no express constructions are required in this proceeding.” Pet. 4. Patent Owner “agrees that the terms of the ’728 Patent have their plain and ordinary meaning.” Prelim. Resp. 7. However, Patent Owner contends that Petitioner construes the claim language “during the driving period” to mean “throughout the driving period.” Id. at 10 (claim language found in claims 1, 13, 24, and 25). Patent Owner contends Petitioner consistently uses the term “during” rather than “throughout” in the analysis of the challenged claims. Id. Patent Owner does not provide support for any specific construction or explain why any claim construction would be necessary for resolution of this proceeding. Based on the current record, we determine the differentiation asserted by Patent Owner between the use of “during” and “throughout” does not require express interpretation as the terms “during” and “throughout” are synonymous.8 Upon review of the record, we determine that no claim terms require express construction for purposes of this Decision. 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 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner and Dr. Michalson propose “that a person of ordinary skill in the art in this matter would have had at least a Bachelor of Science Degree (or equivalent) in an academic area emphasizing electrical engineering, computer engineering, computer science, or a related technical field, and about 2-3 years of experience in the field of telematics systems.” Ex. 1003 ¶ 15; Pet. 2, 11. Dr. Michalson further proposes “[a] greater amount of education, e.g., a doctorate in an academic area emphasizing electrical engineering, computer engineering, computer science, or a related technical field, would compensate for fewer years of work experience.” Id. Patent Owner does not dispute this level of skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal, which comports with the teachings of the ’728 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on our review of the preliminary record, we conclude Petitioner has explained with supporting evidence how the combination of Callopy, Curry, and Thompson teaches or suggests claim 1, sufficiently to justify institution of review. That is, Petitioner explains how a person of ordinary skill in the art would have been motivated to supplement the risk assessment capabilities of Callopy-Curry with the well-known accident detection techniques of Thompson’s WreckWatch application to reduce vehicular accidents and casualties. For the purposes of institution, Petitioner has articulated a reasoned explanation why a POSITA would have been motivated to modify Callopy’s wireless device with Curry’s calculation techniques, and Thompson’s accident detection capabilities. The Petitioner has explained in detail that Curry contemplates the need for multi-modal operation for nuanced driving conditions, and that the incorporation of Callopy would be a natural modification that aligns with standard insurance evaluation methods. Petitioner further explains the implementation of Curry’s scoring system, which is capable of logging data and processing safety statistics, in combination with Callopy’s system leads to enhanced sensor-based driving evaluation in the determination of a driver’s risk profile for insurance purposes. Petitioner further explains in detail how Thompson’s implementation further provides motivation for Curry’s initiatives to “reduce traffic-related fatalities and injuries” and that a POSITA would seek the well-known accident detection technique of Thompson to achieve this. Petitioner identifies that the combination of Callopy, Curry, and Thompson not only can be achieved without any changes to underlying hardware, but also provides the functionality of recording sensor data relating to driving, calculating driving safety statistics, and detecting driving-related incidents. Moreover, as discussed, Petitioner has provided citations to the references along with corroborating testimony from Dr. Michalson that support its arguments for why and how a POSITA would have combined the prior art disclosures with a reasonable expectation of success. See Ex. 1003 ¶¶ 100–116.” slip op. at 34
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information presented shows a reasonable likelihood that Petitioner will prevail in showing the unpatentability of at least one of the challenged claims at issue. Pursuant to § 314, we hereby institute an inter partes review as to challenged claims 1–28 of the ’728 patent.” slip op. at 3
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 12,236,728 - PTAB · Jun 6, 2025 · IPR2025-00300 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–12 on all asserted grounds and granted LG’s motion to join the Vizio IPR, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“ANALYSIS A. Institution of Inter Partes Review We instituted an inter partes review in the Vizio IPR on all challenged claims and all asserted grounds of unpatentability. Vizio IPR, Paper 12; see also Vizio IPR, Paper 1 (the “Vizio Petition”). Petitioner here challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the Vizio IPR. Compare Pet. 1–2, with Vizio Petition, 1–2. Petitioner also relies on an identical declaration from the same declarant as relied upon by the petitioner in the Vizio IPR. Mot. 1 (“[Petitioner] . . . relies upon the same expert declaration as relied upon in the Vizio IPR.”); Ex. 1003, 1 (cover page indicating Declaration of Henry Houh in support of the petition submitted in IPR2024-00723), 134 (signature page dated March 21, 2024). Because the grounds of unpatentability in the instant Petition are identical to those in the Vizio IPR, for the same reasons stated in our Decision to Institute in the Vizio IPR we institute inter partes review in this proceeding on the grounds presented in the Petition. See Vizio IPR, Paper 12, 12–41 (analyzing challenges in the Vizio Petition).” slip op. at 10
- 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 the “Petition is substantively identical to the petition in the Vizio IPR,” “challenging the same claims of the ’384 Patent on the same grounds while relying on the same prior art, arguments, and evidence,” and relying “upon the same expert declaration as relied upon in the Vizio IPR.” Mot. 1, 4–5. Petitioner represents that joinder will not impact the Vizio IPR schedule. Id. at 5–6. Petitioner also represents that it “explicitly agrees to take an ‘understudy’ role” and “will assume the primary role only if Vizio cease to participate in the Vizio IPR.” Id. at 6– 7.” slip op. at 11
NonePatents in suitUS 9,578,384 - PTAB · Apr 25, 2025 · IPR2024-01463 · APJ David Cotta · IPR · Institution
The Board instituted inter partes review of claims 1–10 on all asserted grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“predict how the district court in the related district court litigation will proceed because the court may determine whether or not to stay any individual case . . . based on a variety of circumstances and facts beyond our control and to which the Board is not privy.” Sand Revolution II LLC v. Cont’l Intermodal Grp., IPR2019-01393, Paper 24, 7 (PTAB June 16, 2020) (informative). We decline to speculate on how the court may rule on the pending motion to stay. Accordingly, this factor is neutral.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless 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.” Petitioner has established a reasonable likelihood of prevailing on its assertion that at least one of the challenged claims is unpatentable based on the grounds advanced here. We decline to deny the Petition on a discretionary basis as requested by Patent Owner. Thus, for reasons explained below, we institute inter partes review of claims 1–10 of the ’706 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“TC(220), and ΔRz/Ra are result effective variables and that copper foils having ΔPD, TC(220), and ΔRz/Ra values that meet the values recited in claim 1 have advantageous properties. See, e.g., Ex. 1005 ¶ 45 (Kim ’761, disclosing that preferably the “difference in peak count roughness Rpc between the shiny surface . . . and the matte surface . . . of the electrolytic copper foil . . . is preferably 60 or less” because “when the difference in the peak count roughness Rpc exceeds 60 capacity maintenance of the secondary battery is deteriorated.”);15 Ex. 1007, 3:16–23, 4:14–23 (Cheng, disclosing that the foils of Cheng’s invention have (220) and (311) surfaces that provide increased elongation and that solve a high roughness problem that rendered traditional products unsuitable for use in a lithium ion secondary battery), 10:27–34 (Cheng, disclosing that in the foils of Cheng’s invention “the roughness difference between both sides was extremely small” and thus “it was . . . not easy for the electrolytic copper foil to break or fracture during the charging-discharging cycles and the life of a battery is thus increased”), Tables 3 & 4 (Cheng, disclosing embodiments and comparative examples with TC(220) values meeting the requirements of claim 1); Ex. 1008, 6:36–44 (Wolski, disclosing that “the surface roughness Rz at the matte side of the untreated copper foil of the present invention is the same or smaller than the surface roughness Rz at the shiny side . . . so that the surface treated copper foil . . . becomes more low-profiled . . . whereby it becomes a foil having a large etching factor”), 9:1–29 & Table 2 (Wolski, disclosing 15 Dr. Randall testifies that “Kim ’761’s peak count roughness Rpc corresponds to the peak density PD of the ’706 patent.” Ex. 1003 ¶ 52. At this stage in the proceeding, this testimony is unrebutted. 38 embodiments meeting the ΔRz/Ra of claim 1, describing them as having “matte side roughnesses” that are “sufficiently small,” and as having “excellent” “high temperature elongation characteristics”), 11:37–41 (Wolski, describing comparative examples as having “large” matte side roughnesses “whereby etching factors are not good”), 12:12–27 (Wolski, teaching that “as compared with a conventional untreated copper foil, both surfaces of the untreated copper foil obtained by [Wolski’s] invention are flat” resulting in a low profile foil that has “excellent elongations at room temperature and high temperature and also high tensile strength”). The teachings in the prior art support the presently unrebutted testimony of Dr. Randall explaining why the POSA would have been motivated to modify Kim ’761’s copper foil to have the claimed TC(220) and ΔRz/Ra. Ex. 1003 ¶¶ 66–68, 71–74; Pfizer Inc., v. Sanofi Pasteur Inc., 94 F.4th 1341, 1348 (Fed. Cir. 2024) (“Where [a gap in prior art] includes a parameter not necessarily disclosed in the prior art, it is not improper to consider whether or not it would have been recognized as result-effective. If so, then the optimization of that parameter is ‘normally obvious.’”). Accordingly, we are not persuaded by Patent Owner’s argument that Petitioner failed to articulate a sufficient motivation to combine the references. To the contrary, the preliminary record presents a strong showing that the POSA would have been motivated to combine the references in the manner described in the Petition.” slip op. at 38
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage of the proceeding, Patent Owner does not contest Petitioner’s definition of the level of skill in the art. Prelim. Resp. 4 (“For purposes of this Preliminary Response, Patent Owner applies Petitioner’s level of skill for a person of ordinary skill in the art”). Petitioner’s definition appears to be consistent with the field of the invention reflected in the prior art of record and the disclosure of the ’706 patent. Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition of the person of ordinary skill in the art.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,591,706 - Innoscience (Zhuhai) Technology Company, Ltd / Innoscience America, Inc. v. Efficient Power Conversion CorporationAll claims unpatentablePTAB · Mar 18, 2025 · IPR2023-01381 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–3 and 7–9 are unpatentable as obvious over Uemoto and Smith; the motion to amend is granted, and proposed substitute claims 13 and 14 are not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In order to determine whether an invention would have been obvious at the time the application was filed, we consider the level of ordinary skill in the pertinent art. Graham, 383 U.S. at 17. In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quotation omitted). Petitioner contends a person of ordinary skill in the art “would have possessed at least a four-year degree in electrical engineering, chemical engineering, physics, or material science, or a closely related field, and at least two years of experience in semiconductor device design or fabrication, including the processing of semiconductor materials, analysis of device operation, or the development of new device topologies.” Pet. 5–6. Petitioner contends “[a]dditional education could substitute for professional experience and vice versa.” Id. at 6. Patent Owner contends that a person of ordinary skill in the art would have had “at least a four-year degree in electrical engineering, physics, material science, or a closely related field, and three years of professional work experience in the epitaxial growth, design, and fabrication of semiconductor electronic devices, including those of GaN.” PO Resp. 7 (citing Ex. 2009 ¶ 82). Upon review of the evidence of record and the parties’ arguments, we adopt Petitioner’s definition of the person of ordinary skill in the art as it is consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art). We note, however, that the conclusions reached in this Decision would be the same under either proposed definition of the ordinarily skilled artisan. See Ex. 2009 ¶ 83 (Dr. Schubert testifying that his opinions would be the same under either proposed definition); Ex. 1033 ¶ 9 (Dr. Shealy testifying that the differences in proposed definitions of the ordinarily skilled artisan “would not change the outcome of the invalidity analysis in any material manner”); PO Resp. 7; Pet. Reply 1.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“compensated GaN layer above the barrier layer, and a gate contact above the compensated GaN layer.” Ex. 1001, 5:12–18. Petitioner contends the term “compensated” indicates that the step of compensating the GaN layer has already occurred, such that the term “compensated GaN layer” should be construed as a “‘[d]oped GaN layer formed with a step to passivate its impurities’ which is a ‘product-by-process’ limitation.”5 Pet. 12–14. And, because compensation with hydrogen was the “critical step” distinguishing the claims from the prior art, and because hydrogenation in as-grown III-nitride materials had been well known for over a decade by 2009, Petitioner contends “compensated” “cannot be interpreted as mere hydrogen presence in as-grown material, a well-known property of doped GaN.” Id. at 15. Patent Owner contends “compensated GaN material” should be construed as “a semiconductor GaN gate material in which one type of impurity (for example, donor) cancels the electrical effects of the other type of impurity (for example, acceptor).” PO Resp. 11 (citing Ex. 2009 ¶ 92) (emphasis added). Patent Owner contends this construction is consistent with the IEEE dictionary, which defines “compensated semiconductor” as 5 Given that product-by-process steps in a device claim are not entitled to patentable weight, Petitioner contends “the prior art only need show a material with passivated impurities to show unpatentability, not the step to achieve it.” Pet. 15–16. “[a] semiconductor in which one type of impurity or imperfection (for example, donor) partially cancels the electric effects of the other type of impurity or imperfection (for example, acceptor).” PO Resp. 14 (quoting Ex. 2004). Patent Owner contends its construction is also consistent with the written description of the ’294 patent, which explains that a compensated GaN material is part of the gate and includes a p-type impurity that imparts an electrical effect (i.e., conductivity), as well as a second impurity, e.g., hydrogen, that partially cancels the electrical effect of the p-type impurity, rendering the layer semi-insulating. Id. at 14–15 (citing Ex. 1001, 3:10–13, 3:43–45). On this record, we construe “compensated GaN layer” as “a GaN layer in which one type of impurity (for example, donor) partially cancels the electric effects of the other type of impurity (for example, acceptor).” This is consistent with the disclosures of the ’294 patent, the IEEE dictionary definition, and the construction ultimately adopted by the ITC. Ex. 2004, 3; Ex. 1049, 16–17 (ITC construing “compensated GaN layer” to mean “a GaN layer in which one type of impurity partially cancels the electrical effects of another type of impurity”); Ex. 1001, 3:43–45 (explaining that the compensated GaN layer of the ’294 patent is formed through the “passivation of a p-type impurity using hydrogen”). For the reasons set forth below, however, we decline to construe “compensated GaN layer” as a product-by-process claim term (as asserted by Petitioner), or to limit the compensated GaN layer to a gate material (as asserted by Patent Owner).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“There are two exceptions to the general rule that we apply the ordinary and customary meaning of a claim term: (1) when a patentee sets out a definition and acts as his own lexicographer, or (2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution. See Thorner, 669 F.3d at 1365. The standards for lexicography and disclaimer, however, are “exacting.” Id. at 1366. There is no argument that the patentees acted as their own lexicographer to redefine the term “compensated GaN layer.” With respect to disavowal, a “patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Thorner, 669 F.3d at 1366 (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002)). As noted by Patent Owner, the title of the ’294 patent is, in part, “Compensated Gate MISFET” and much of the discussion of the ’294 patent is of a compensated GaN layer that is directly below the gate contact and above a barrier layer and operates in conjunction with the gate contact to control the on/off state of the transistor. PO Resp. 12–14. We are presented with insufficient argument or evidence to conclude, however, that these disclosures rise to the level of a disclaimer. For example, although the title of the ’294 patent is directed to a “Compensated Gate MISFET,” claim 1 is more broadly directed to “[a] column III Nitride transistor.” Ex. 1001, 5:12, code (54). Nor are we directed to an expression or statement of manifest exclusion in the ’294 patent that would serve to disclaim any “compensated GaN layer” that is not directly below the gate and/or that does not function in concert with the gate electrode to control the on/off state of the transistor. See Thorner, 669 F.3d at 1366. With respect to the stated goals of the invention, as noted by Patent Owner, one of the primary purposes of the compensated GaN layer of the ’294 patent is to reduce gate leakage and gate capacitance. Ex. 1001, 2:13– 19, 3:18–21 (“[U]sing a compensated semiconductor layer 38 leads to low gate leakage during device operation.”). We cannot use the goals of the invention, however, to rewrite the claims or insert terms that are not present. See Thorner, 669 F.3d at 1366. Moreover, the prior art of record indicates that a compensated GaN layer that is below the gate contact and above a barrier layer, but not part of the active gate structure, may also “decrease the leakage current between the gate and the drain.” Ex. 1006 ¶¶ 44 (“Even when a positive bias of 5 V or higher is applied to the gate electrode, no significant gate-leakage current is observed.”), 61. As such, evidence of record suggests that a person of ordinary skill in the art would have understood that one of the primary goals disclosed in the ’294 patent is achieved regardless of whether the compensated GaN layer is part of the gate, or simply in close vicinity to the gate. In view of the foregoing, we are not persuaded that the written description of the ’294 patent indicates that the “compensated GaN layer” must be part of the gate structure.” slip op. at 17
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“To be probative, Patent Owner must prove there is a nexus between the presented evidence and the merits of the claimed invention. See Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). A rebuttable presumption of nexus applies when the “patentee shows that the asserted evidence is tied to a specific product and that the product ‘is the invention disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Demaco, 851 F.2d at 1392). “That is, presuming nexus is appropriate ‘when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.’” Id. (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). If the praise is not limited to the features of the claimed invention, the patent owner may still prove nexus “by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Id. at 1373–74 (quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)). Patent Owner contends that the compensated gate of the ’294 patent “was a breakthrough invention and resulted in the first commercially viable enhancement-mode GaN transistor.” PO Resp. 60 (citing Ex. 2009 ¶¶ 192– 193, 197; Ex. 2021). Patent Owner further contends that this achievement required the counter-intuitive use of a compensated gate material in the gate structure, and represented “a technological leap that laid the foundation for viable enhancement-mode GaN transistors.” Id. at 61–62. For this achievement, Patent Owner contends the inventor, Dr. Alex Lidow, received the 2015 SEMI Award. Id. at 60 (citing Ex. 2021). Upon review of Patent Owner’s evidence and the parties’ arguments, we find that Patent Owner’s objective indicia evidence is entitled to little, if any, weight. The evidence of praise relied upon by Patent Owner is not clearly linked to the claimed invention or any particular product having each of the claimed features of the ’294 patent. Ex. 2021. For example, the 2015 SEMI award was provided to Dr. Lidow “for commercialization of GaN power devices.” Id. An article explaining the award indicates that “high cost” previously “limited [the] commercial success” of GaN technologies, but Dr. Lidow was able to overcome these issues, “from resolving packaging limitations to establishing a low-cost supply chain,” “through persistence.” Id. This praise is not demonstrably linked to the claimed invention or any particular device, and does not mention the use of a compensated gate, or any other relevant feature recited in the claims. In view of the foregoing, we determine that Patent Owner’s objective evidence of non-obviousness is entitled to little, if any, weight.” slip op. at 20
Patent outcomesUS 8,350,294 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 8,350,294 - PTAB · Feb 27, 2025 · IPR2024-01228 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable over Fukui.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Conclusion Petitioner shows a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable over Fukui. Accordingly, we institute inter partes review of all challenged calms based on all grounds asserted in the Petition. See SAS, 138 S.Ct. at 1354.” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“III. DISCRETION TO DENY INSTITUTION UNDER 35 U.S.C. § 325(d) Patent Owner argues that if the Board determines that Petitioner’s Fukui-based grounds 1 and 2 are deficient, then the Board should deny institution under § 325(d). Prelim. Resp. 26. In particular, Patent Owner asserts that remaining grounds 3 through 5 rely on art (i.e., Sauter) a reference that is substantially similar to art that was before the Examiner (i.e., Sedor). Id. at 26–27. Because we do not determine that Fukui-based grounds are deficient, we decline to exercise our discretion to deny institution under § 325(d).” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art (“POSITA”) “would have a B.S. degree or equivalent in mechanical or electrical engineering or similar fields, in addition to a minimum of two years of professional experience with or graduate studies involving design, development, and/or utilization of optical communication systems.” Pet. 26. (citing Ex. 1003 ¶¶ 19–21). At this stage of the proceeding, Patent Owner neither responds to Petitioner’s proposed definition, nor provides a definition of its own. See Prelim. Resp. Petitioner’s undisputed proposed definition appears to be consistent with the cited prior art and the disclosure of the ’422 patent, and we adopt it for purposes of this Decision.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed petitioner constructionDecided for petitioner
“Based on the present record, we agree with Petitioner that Patent Owner’s statements during prosecution are relevant to claim construction. Pet. 24–25. During prosecution of the parent application to the ’422 patent, Patent Owner stated, inter alia, that “a person of ordinary skill in the art would understand that the width of a cassette is simply the width of the cassettes from side to side and not some other ‘dimension’ such as the number of receptables or the like.” Ex. 1002, 187. Patent Owner further stated that it disagreed with the Examiner’s statement that paragraph 15 of the specification6 defines width in terms of the number of receptacles and that such a definition of width makes no sense in view of other claims where the standard with is defined in terms of a width of front edge of a tray on which the cassettes are secured. Id. We note that at this stage of the proceeding, Patent Owner has not provided any argument or evidence opposing Petitioner’s proposed construction or supporting the claim construction that it proposed during the district litigation. Our construction is preliminary and the parties are invited to address this claim construction more fully during trial.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,656,422
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.