- PTAB · Oct 6, 2026 · IPR2025-00530 · APJ Scott C Moore · IPR · Final written decision
Original claims 1–9 were canceled; the non-contingent motion to add substitute claims 10–18 was denied for lack of written-description support, and claim 18 was also indefinite.
RulingsFinal written decision- 112 supportMotion to amend, deniedDenied
“that either the ’303 application or the ’838 provisional contain adequate written description support for the disputed feature of limitation [10.d]. Though the disclosures cited by Patent Owner indicate that a secondary identifier can be used to aid in verification of a UAV, these disclosures also make clear that both first and second identifiers are transmitted by and received from the UAV. See, e.g., Ex. 2002, 4:15–17, 30:24–31:6; Ex. 2003 ¶¶ 14, 66. Patent Owner’s reliance on disclosure characterized as transmitting an identifier from a remote computing system “through the UAV” (Reply 2) is not persuasive. The cited disclosures from the ’303 application and ’838 provisional generally disclose that the identifiers transmitted by a UAV can be “generated remotely,” such as by a “remote computing system.” Ex. 2002, 14:23–15:2; Ex. 2003 ¶ 45. But Patent Owner has not identified disclosure indicating that a remote computing system may transmit an identifier to the identification receiver. In the ’303 application and ’838 provisional, only the UAV (which is part of the discrimination system, and thus not “remote”) actually transmits identifiers to the identification receiver. Patent Owner is correct in its assertion that an “aerial system identifier can be generated on-board the aerial system” or “generated remotely . . . at a remote computing system.” Mot. 7 (citing Ex. 2002, 14:23–15:2; Ex. 2003 ¶ 45). But even if a UAV’s identifier was at some time in the past generated by a remote computing system, the subsequent transmission of that identifier from the UAV to the identification receiver would not satisfy the plain language of limitation [10.d]. The claim language “receive … a second identifier from a computing system that is remote to the discrimination system” requires the receipt of a transmission of the second identifier from a remote computing system. This claim language limits the source of the received transmission (i.e., where the particular transmission is “receive[d] … from”). Thus, the relevant issue is from where was the recited second identifier received. The relevant is not where the second identifier was originally generated.” slip op. at 12
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteIndefiniteMixed
“We determine that the disputed language in limitation [10.d] is not indefinite. There is no recitation in proposed substitute claim 10 that the second identifier is transmitted solely from the identifier transmission system. Thus, the alleged irreconcilable contradiction cited by Petitioner is not recited in the claims. Petitioner’s position appears to rest on the fact that the ’303 application and ’838 provisional do not disclose receiving the second identifier from a remote computing system. See Sur-reply 6 (“To manufacture written description support, [Patent Owner] argues the claim encompasses identifiers routed ‘through the UAV.’”). Though we agree that limitation [10.d] lacks adequate written description support, this defect does not render the claim indefinite because the scope of limitation [10.d] is otherwise reasonably certain based on its plain language. See supra § III.C.4.” slip op. at 18
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artPriority date, deniedDecided for patent owner
“In contrast, the ’393 provisional never discloses that the described drone defense system may use the identity of a detected drone to develop a particular countermeasure. The disclosed RTSS certainly uses identity information to determine whether a drone is a threat. And if a threat is identified, the RTSS immediately starts “a series of processes … to determine what rule of engagement will be applied on the intruding drone.” Ex. 1006 ¶ 10. The ’393 provisional discloses that the system may select a particular countermeasure based on (i) the particular zone within a protected area within which a drone is located, (ii) “the behavior of the hostile drone,” or (iii) “other instructions.” Id. ¶¶ 9, 10. But the ’393 provisional never discloses that these “other instructions” may include the identity of the drone. The system disclosed in the ’393 provisional uses the identity of a drone to determine whether to activate the countermeasure system. See id. ¶¶ 16–18. But there is no disclosure in the ’393 provisional that the countermeasure system, once activated, uses the identity of the drone to develop the particular countermeasure to be employed. See generally Ex. 1006. Thus, though the Whitmarsh reference itself contains ample written description support for limitation [19e], the earlier-filed ’393 provisional does not. On this record, and having reviewed the ’393 provisional in its entirety, we determine that the ’393 provisional does not “reasonably convey[] to those skilled in the art that the inventor had possession of” the subject matter of limitation [19e] of Whitmarsh’s claim 19 “as of the filing date” of the ’393 provisional. See Ariad, 598 F.3d at 1351.” slip op. at 27
§ 102 anticipation§ 112 disclosurecites NautilusPatents in suitUS 10,249,199 - PTAB · Oct 6, 2026 · IPR2025-00525 · APJ Scott C Moore · IPR · Final written decision
Original claim 21 was canceled; the Board denied substitute claim 22 for new matter and held it obvious under §103 based on six combinations.
RulingsFinal written decision- 112 supportMotion to amend, deniedDenied
“First, Patent Owner has not shown possession of the disputed feature of a “radio communication module [that] is configured to utilize a secure identifier, the secure identifier comprising a specified excitation.” In the ’406 application, the term “excitation” is used exclusively to refer to a light beam signal. See Ex. 2015, 7:8–13, 9:8–10, 23:9.2 The ’406 application discloses that an identification box on an aircraft may include both an RF module and a separate light sensor. See Ex. 2015, 7:3–11. But nowhere does the ’406 application describe receiving a light beam (e.g., an excitation) with the RF module of the identification box (as opposed to the light sensor), so as to provide support for proposed substitute claim 22’s recitation of a “radio communication module” configured to utilize “a secure identifier . . . comprising a specified excitation.” We disagree with Patent Owner that it suffices that one of ordinary skill in the art “would recognize that these disclosures are equally applicable to the RF-only embodiments” (Reply 5). “It is not sufficient for purposes of the written description requirement . . . that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). On this record, and having reviewed the ’959 Patent, the ’153 provisional, and the ’406 application, we find no evidence in those documents that the named inventor was in possession of the concept of a radio communications module “configured to utilize a secure identifier” where “the secure identifier compris[es] a specified excitation.” Second, setting aside the “radio communication module” in proposed substitute claim 22, Patent Owner also has not shown that the named inventor was in possession of the feature of a “secure identifier comprising a specified excitation.” Patent Owner’s argument that the ’406 application describes a light beam directed to a particular aircraft (see Reply 4–5) is 2 The same is true of the ’153 provisional. See Ex. 2016 ¶¶ 29, 34. unavailing. The fact that the properties of a particular light beam indicate that the light beam is intended for a particular aircraft does not demonstrate that the light beam is a “secure identifier,” as we have construed that term. Patent Owner has not identified any disclosure in the ’406 application of a “secure identifier” comprising a light beam, let alone that such light beam can be utilized by a “radio communication module.” The only references to “secure” identifiers in the ’406 application describe radio frequency signals. See Ex. 2015, 2:4–6, 15:21–17:12.3 Having reviewed the ’959 Patent, the ’153 provisional, and the ’406 application, we find no evidence in those documents that the named inventor was in possession of the concept of a “secure identifier comprising a specified excitation.”” slip op. at 15
- ScopeDecided for patent owner
“not impermissibly broaden the scope of the claims of the ’959 Patent. As Patent Owner suggests, there were no limitations in original claim 21 on the type of radio signal the radio communication module could receive, and so it follows that proposed substitute claim 22 does not now encompass receiving a broader set of radio signals. We see no basis for Petitioner’s argument that the past tense verb “received” limited original claim 21 to “signals of a compatible ‘type’ and ‘range.’” Opp. 7. Moreover, the claim language (with the proposed deletion shown double brackets) provides that “the radio communication module is configured to receive a [[received]] radio signal.” Any radio signal that the radio communications module receives would necessarily be a “received” radio signal. Thus, deleting the redundant word “received” does not enlarge the scope of this claim limitation. We also are not persuaded by Petitioner’s suggestion that removing the term “received” broadens original claim 21 by deleting a requirement that the radio signal have already been previously received by the claimed device. See Sur-reply 9. Original claim 21 simply recited, using redundant language, that “the radio communication module is configured to receive a received radio signal.” Ex. 1001, 18:5–7. The most natural reading of this language is that the phrase “received radio signal” is just a description of a radio signal that is received by the recited radio communications module. Petitioner has cited no persuasive evidence that one of ordinary skill in the art would have counterintuitively interpreted this language to impose an additional requirement that the “received radio signal” must have been received twice—a first time by some other component of the device, and a second time by the recited radio communication module. Accordingly, we determine that the proposed amendment does not improperly broaden claim scope.” slip op. at 10
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteNot shown unpatentable
“572 U.S. 898 (2014). See Memorandum: Approach to Indefiniteness Under 35 U.S.C. § 112 in AIA Post-Grant Proceedings (Jan. 6, 2021).4 Under Nautilus, a claim is indefinite if fails to “inform those skilled in the art about the scope of the invention with reasonable certainty.” 572 U.S. at 910. We agree with Patent Owner that neither of the identified terms are indefinite. Regarding the term “low-altitude aircraft,” we determine the Specification provides a sufficient basis for understanding the scope and meaning of this term with reasonable certainty. The U.S. Court of Appeals for Federal Circuit has explained that, when a term of degree is recited in a claim, it is necessary “to determine whether the patent’s specification provides some standard for measuring that degree.” See Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984); see also Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005) (“Some objective standard must be provided in order to allow the public to determine the scope of the claimed invention.”). Here, the Specification describes the related art as including “small UASs (e.g., aircrafts up to 25 pounds flying up to 500 ft of the low altitude airspace).” Ex. 1001, 1:50–52. One of ordinary skill in the art would understand from the Specification that the cited disclosure provides an objective standard for determining the scope of a low-altitude aircraft as one that is designed to fly up to a maximum altitude of about 500 feet.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Institution Decision, we adopted Petitioner’s proposal that one of ordinary skill in the art would have had the following qualifications: [E]ither (1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Aerospace engineering, or an equivalent field, as well as at least 2 years of academic or industry experience in the aerospace, avionics, telecommunications, or electronic device manufacturing industry, or (2) at least four years of industry experience in any of the above industries. Paper 13, 5 (citing Pet. 21). Patent Owner has not disputed this formulation; thus, we adopt it for purposes of this Decision. See Paper 13, 10–11 n. 8.” slip op. at 23
§ 103 obviousness§ 112 disclosurecites Graham · NautilusPatents in suitUS 10,713,959 - Tesla, Inc. v. Intellectual Ventures II LLCNo claims unpatentablePTAB · Jun 23, 2026 · IPR2025-00219 · APJ Frederick C Laney · IPR · Final written decision
Claims 11–22 were not shown unpatentable under any § 103 ground because the prior art did not teach or suggest receiving the claimed resource allocation and multi-level TPC command on one physical channel.
RulingsFinal written decision- BurdenNot shown unpatentable
“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 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). Moreover, a petitioner should 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103, effective March 16, 2013. Because the application from which the ’153 patent issued claims priority to an application filed before this date, the pre-AIA version of § 103 applies. not “place the burden on [the Board] to sift through information presented by the Petitioners, determine where each element [of the challenged claims] is found in [the cited references], and identify any differences between the claimed subject matter and the teachings of [the cited references.]” Google Inc. v. EveryMD.com LLC, IPR2014-00347, Paper 9 at 25 (PTAB May 22, 2014).” slip op. at 5
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“The second and third asserted benefits—reduced complexity and reduced latency—rest on the declaration of Dr. Kotzin (Ex. 1003 ¶ 64) rather than on any disclosure of Andersson or Khan. We accord that testimony little weight on this point because it asserts the benefits in conclusory terms without explaining why they would result from inserting a scheduling grant into Andersson’s undefined “other bits,” as distinct from Khan’s separate-slot design.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art Petitioner asserts that ordinarily skilled artisans “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of wireless communication systems or design of similar communication systems.” Pet. 14. Petitioner’s proposed definition, which Patent Owner does not dispute, appears reasonable and consistent with the asserted prior art and the ’500 Patent. Therefore, we adopt it as the ordinary level of skill of an artisan in the field of the patented technology for our analysis below.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner offers a proposed construction for the recited “single physical channel” found in limitation 11.2 and “an accumulation of TPC commands” found in independent claims 12 and 18. PO Resp. 9–17. Petitioner likewise addresses the scope of an accumulation of TPC commands, but Petitioner does not contest directly Patent Owner’s proposed construction for “single physical channel.” Pet. Reply 2–7. We determine, however, that no express construction of any claim term is necessary to resolve the dispute between the parties. 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 8
Patent outcomesUS 9,706,500 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,706,500 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Maxell, Ltd.All claims unpatentablePTAB · Apr 27, 2026 · IPR2024-00906 · APJ Frederick C Laney · IPR · Final written decision
Claims 1, 4–6, and 8–27 are unpatentable as obvious; Judge Hudalla dissented as to claim 15.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“reachable through intuitive navigation from the homepage using the descriptive titles to the reference, is sufficient to demonstrate the BT-Spec was publicly accessible. See M&K Holdings, Inc. v. Samsung Electronics Co., 985 F.3d 1376, 1381 (Fed. Cir. 2021) (“The law regarding public accessibility is not as restrictive as M&K suggests—a website’s landing page is not required to have search functionality. Instead, given the prominence of JCT-VC, the dispositive question is whether interested users of the JCT-VC website could have located Park and Zhou through reasonable diligence.”). The Bluetooth SIG website itself functioned as a well-known, organized repository that a skilled artisan would naturally consult when researching Bluetooth technology. See id. at 1382 (“The Board found that the documents in question on the meeting pages of the JCT-VC website were effectively indexed by subject matter in light of the title-search functionality and the fact that Park and Zhou featured descriptive titles. That finding supports the Board’s conclusion that Park and Zhou were publicly accessible.”).” slip op. at 39
- ExcludeMotion to exclude, deniedDenied
“IV. PATENT OWNER’S MOTION TO EXCLUDE The party moving to exclude evidence bears the burden of proof to” slip op. at 139
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“12. Conclusion Based on the complete record, we find a preponderance of the” slip op. at 115
Patent outcomesUS 11,445,241 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,445,241 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Maxell, Ltd.All claims unpatentablePTAB · Apr 27, 2026 · IPR2024-00907 · APJ Frederick C Laney · IPR · Final written decision
Claims 1, 4, 5, 8–12, and 14–25 are unpatentable as obvious; the majority finds the asserted combinations persuasive despite 3GPP-Spec not qualifying as prior art.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“accessibility. A document hosted on the official standards body website, reachable through intuitive navigation from the homepage using the descriptive titles to the reference, is sufficient to demonstrate the BT-Spec was publicly accessible. See M&K Holdings, Inc. v. Samsung Electronics Co., 985 F.3d 1376, 1381 (Fed. Cir. 2021) (“The law regarding public accessibility is not as restrictive as M&K suggests—a website’s landing page is not required to have search functionality. Instead, given the prominence of JCT-VC, the dispositive question is whether interested users of the JCT-VC website could have located Park and Zhou through reasonable diligence.”). The Bluetooth SIG website itself functioned as a well-known, organized repository that a skilled artisan would naturally consult when researching Bluetooth technology. See id. at 1382 (“The Board found that the documents in question on the meeting pages of the JCT-VC website were effectively indexed by subject matter in light of the title-search functionality and the fact that Park and Zhou featured descriptive titles. That finding supports the Board’s conclusion that Park and Zhou were publicly accessible.”).” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” (alteration in original)). This search for answers about whether the claimed subject matter would have been obvious to a skilled artisan at the time of the invention applies “an expansive and flexible approach.” Id. at 415. Whether a patent claiming the combination of prior art elements would have been obvious is determined by whether the improvement is more than the predictable use of prior art elements according to their established functions. Id. at 417. Reaching this conclusion, however, requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. Id.” slip op. at 14
- ExcludeMotion to exclude, deniedDenied
“IV. PATENT OWNER’S MOTION TO EXCLUDE The party moving to exclude evidence bears the burden of proof to” slip op. at 158
Patent outcomesUS 10,129,590 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,129,590 - PTAB · Jun 11, 2025 · IPR2025-00262 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR of claims 1–20 on all grounds, finding a reasonable likelihood that Haley and Lai render the claims obvious.
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 filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on our review of the record,1 we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims.” slip op. at 2
- Other 314aDenied
“Patent Owner argues that we should discretionarily deny the Petition based on alleged deficiencies in the Petition. Specifically, Patent Owner argues that “even if arguments as to a few claims might have been properly presented in the Petition, a decision to institute here would require the Board to address—for the first time and with no Petitioner input—critical claim construction issues affecting nearly every claim” in contravention of the requirements of 37 C.F.R. § 42.104(b)(3). Prelim. Resp. 34–35. For the reasons discussed above, we are not persuaded on the current record that Petitioner has violated 37 C.F.R. § 42.104(b)(3), or that critical and unresolved claim interpretation issues justifying discretionarily denying the Petition exist. We, therefore, decline to deny institution on this basis.” slip op. at 10
- Skill levelSkill level board ownOther
“we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The parties’ briefs do not propose a specific definition of a level of ordinary skill in the art. See generally, Pet., Prelim. Resp. Dr. Vallee, however, testifies that one of ordinary skill in the art relevant to the ’954 patent: would have either (i) a Master’s degree in mechanical engineering with at least two years of experience in power nailer design; (ii) a Bachelor’s degree in mechanical engineering with at least five years of experience in powered nailer design; or (iii) ten (or more) years of experience in powered nailer design. This experience in powered nailer design would include mechanical design, tool design, manufacturing, mechanics of materials, stress analysis, ergonomics, and human factors. Ex. 1003, ¶ 49. For purposes of this Decision, we adopt and apply Dr. Vallee’s formulation regarding the level of ordinary skill in the art.” slip op. at 6
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesOther
“1. Lifter The Petition contends that the “lifter” limitation is a means-plus- function limitation, Pet. 7, which Patent Owner does not dispute, Prelim. Resp. 15–26. Patent Owner argues, however, that Petitioner has “fail[ed] to identify any structure in the ’007 [sic, ’954] Patent to perform the claimed function.” Prelim. Resp. 15. We disagree. Petitioner identifies the structures in the Specification corresponding to the “lifter” as follows: The “lifter member” of the ’954 patent includes a rotatable cam lifter 100 (yellow, below left), with pin 104, 106, and 108 (green) on its face surface that engage protrusions 92 (blue) on the driver member 90 (orange). ’954 patent, 9:25–41, 16:32–46, Fig. 12. The ’954 patent also discloses two-pin variants: lifter members 465 and 480 in Figs. 31, 33. ’954 patent, 32:12–27, 32:45–60. Pet. 15. This identification of corresponding structure is sufficient to satisfy 37 C.F.R. § 42.104(b)(3). We also note that at this stage of the proceeding, Patent Owner does not dispute that Petitioner has correctly identified the corresponding structure. The parties may further address the proper interpretation of “lifter” at trial.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,478,954 - PTAB · Jun 11, 2025 · IPR2025-00261 · APJ Mitchell G Weatherly · IPR · Institution
Instituted IPR of claims 1–20 on all grounds after finding a reasonable likelihood that Haley anticipates claims 1, 7, 8, 17, and 20 and Haley with Lai renders the remaining claims obvious.
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 filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on our review of the record,1 we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims.” slip op. at 2
- Other 314aInstitution denied discretionary otherDenied
“Patent Owner argues that we should discretionarily deny the Petition based on alleged deficiencies in the Petition. Specifically, Patent Owner argues that “even if arguments as to a few claims might have been properly presented in the Petition, a decision to institute here would require the Board to address—for the first time and with no Petitioner input—critical claim construction issues affecting nearly every claim” in contravention of the requirements of 37 C.F.R. § 42.104(b)(3). Prelim. Resp. 33–35. For the reasons discussed above, we are not persuaded on the current record that Petitioner has violated 37 C.F.R. § 42.104(b)(3), or that critical and unresolved claim interpretation issues justifying discretionarily denying the Petition exist. We, therefore, decline to deny institution on this basis. E. Claims 1, 7, 8, 17, and 20: Anticipation by Haley” slip op. at 11
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“1. Lifter The Petition contends that the “lifter” limitation is a means-plus- function limitation, Pet. 7, which Patent Owner does not dispute, Prelim. Resp. 10–14. Patent Owner argues, however, that Petitioner has “fail[ed] to identify any structure in the ’007 Patent to perform the claimed function.” Prelim. Resp. 10. We disagree. Petitioner identifies the structures in the Specification corresponding to the “lifter” as follows: The “lifter” (“lifter member”) of the ’007 patent includes a rotatable cam lifter 100 (yellow below left), with pin 104, 106, and 108 (green) on its face surface that engage protrusions 92 (blue) on the driver member 90 (orange). ’007 patent, 9:36–52, 16:39–53, Fig. 12. The ’007 patent also discloses two-pin variants: lifter members 465 and 480 in Figs. 31, 33. ’007 patent, 32:23–38, 32:56–33:4. Pet. 17. This identification of corresponding structure is sufficient to satisfy 37 C.F.R. § 42.104(b)(3). We also note that at this stage of the proceeding, Patent Owner does not dispute that Petitioner has correctly identified the corresponding structure. The parties may further address the proper interpretation of “lifter” at trial.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“gas pressure system” recited in the preamble of independent claims 1 and 17. Prelim. Resp. 21–22. Patent Owner further argues that Petitioner, through its comparison of claims 1 and 17 to Haley, improperly implies that the “gas pressure system” can be “limited to a distinct portion of a power tool.” Id. at 23. Patent Owner contends that such an interpretation is improper because the “gas pressure system” must refer to “the entire system,” because the “structure of the claims themselves . . . include[s] . . . every component of the tool.” Id. We disagree. The “gas pressure system” recited in the preambles of claims 1 and 17 expressly refers to a system that is “for a power tool” and thus does not necessarily refer to “the entire” tool or “every component of the tool.” Ex. 1001, 39:6 (claim 1), 40:51 (claim 17). Neither claim 1 nor claim 17 recites, for example, the lifter or driver, which are required elements of an “entire” tool. Id. at 39:6–22 (claim 1), 40:51–67 (claim 17). The lifter and driver are introduced in dependent claims 2 and 18. Id. at 39:23–30 (claim 2), 41:1–9 (claim 18). Still other necessary components of a tool, e.g., a motor and power source, are introduced in dependent claims 5 and 19. Id. at 39:40–42 (claim 5), 41:10–13 (claim 19). By contrast to claims 1 and 17, independent claims 9 and 14 recite a “portable fastener driving tool” and expressly recite many necessary components of such a tool including the driver, lifter, prime mover, and power source. Id. at 39:54 (claim 9), 40:20 (claim 14). Accordingly, we find that the “gas pressure system” of claims 1 and 17 broadly refers to a portion of a power tool rather than the “entire system” or “every component of the tool.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,034,007 - PTAB · May 23, 2025 · IPR2025-00196 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR on claims 1–16 under both § 103 grounds, finding a reasonable likelihood that at least one claim would have been obvious over Best-2008 and Osada.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Under our current guidance, the filing of a Sotera-type stipulation is not conclusive, but remains “highly relevant” and will be considered “as part of [our] holistic analysis” here. See Guidance Memo. Whether Petitioner has other bases for invalidating the ’457 patent, such as the CarnoJet prior art product identified in the district court, is not a consideration here if such bases could not be asserted in this proceeding (and are not being used to argue over the asserted prior art here as a loop hole from the stipulation, of which there is no evidence).” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“satisfied that Petitioner has met its burden for institution. No argument by Patent Owner persuades us otherwise. Petitioner has shown that each limitation and element of claim 1 is taught or suggested by the combination of Best-2008 and Osada. Moreover, Petitioner’s asserted reason to combine the references is supported by the references’ disclosures: Best-2008 suggests filtration of its coolant is desirable, but provides no specific means for doing so; Osada teaches a way of filtering fluid from an open-top tank, similar to Best-2008’s.” slip op. at 42
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A POSITA[12]in the field of the ’457 patent at the time of the earliest possible effective filing date (December 14, 2012) would have had Bachelor of Science degree in mechanical or chemical engineering and at least two years of experience relating to the design and/or implementation of fluid circulation systems involving application of fluid dynamics and heat transfer principles. Additional education may serve as a substitute for a lack of experience and vice versa. (Ex-1003- Dahm at ¶¶36-41, 63-70.) Pet. 18–19. Patent Owner applies this same definition. Prelim. Resp. 6–7. At this stage of the proceeding, we accept and use Petitioner’s proposed and unopposed definition of the ordinarily skilled artisan. It appears that Petitioner’s proposed definition comports with the level of skill in the art reflected in the prior art of record and the ‘457 patent, itself. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Although either of the district court proceedings’ definitions of the term “weir” appears to accurately describe the feature, at this stage of the proceeding, we do not find it necessary to expressly interpret this claim language.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,405,457 - Yealink (USA) Network Technology Co. Ltd. / Yealink Network Technology Co., Ltd. v. Barco N.V.InstitutedPTAB · Apr 8, 2025 · IPR2024-01439 · APJ Frederick C Laney · IPR · Institution
The Board instituted IPR of claims 1–11 and 13–21 on all asserted grounds, finding a reasonable likelihood of prevailing on claim 1 over Uchida and Grimshaw.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless 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.” After considering the Petition and the evidence of record, and in the absence of any argument or evidence to the contrary, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’951 patent. Accordingly, we institute an inter partes review of claims 1–11 and 13–21 of the ’951 patent on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We do not agree that the references relied upon in the Petition are cumulative of the Banerjee and Epstein references previously considered by the Office. For example, during reexamination Patent Owner represented to the Office that neither Banerjee nor Epstein discloses or suggests “an actuator on the peripheral device, wherein said actuator is arranged in a way to enable the user to carry out a user action by actuating the actuator to trigger the processing device to transfer said user selected arbitrary media content to said wireless transmitter through said port to transmit said user selected arbitrary media content to the display node via the communications network” . . . . [T]he skilled person would have appreciated that Banerjee is directed to the plug-and-play device having code that is automatically executed when the plug-and-play device is connected to the remote computer and the remote computer sending a request to share the screen by the master computer, whereas Epstein is directed to a puck that sends an intention to the switching device or wirelessly through the laptop. Ex. 2001, 124–125 (emphasis added). Here, however, Petitioner relies primarily on the structures and operations disclosed by Ono, Ichieda, and Uchida to demonstrate it would have been known to include an actuator on a wireless peripheral device to trigger the transfer of a user selected arbitrary media content. See Pet. 31–33, 57–59, 77. Importantly, unlike Epstein or Banerjee, each of those references discloses display systems that include wireless peripheral devices that have actuators that are at least related to facilitating the transfer of image data from a personal computer to a projector for display. See id. As such, we find that Ono, Ichieda, and Uchida present information that is neither substantively similar nor cumulative of that disclosed or suggested by Banerjee and Epstein. Accordingly, we decline to exercise discretion to deny institution pursuant to 35 U.S.C. § 325(d).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner contends that a person having ordinary skill in the art would have had at least a Master’s Degree in Electrical Engineering with . . . five years of work experience in computer science and embedded systems, or Master’s Degree in Computer Science with . . . five years of work experience in electrical and computer engineering and embedded systems. Additional educational experience could substitute for some of the work experience. Pet. 10 (citing Ex. 1002 ¶¶ 36–37). For purposes of this Decision, we adopt Petitioner’s proposed definition of a person of ordinary skill in the pertinent art, as it is consistent with the ’951 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- BurdenInstituted
“Patent Owner’s assertion fails to undermine Petitioner’s contention because it does not actually address Petitioner’s point, which is that a skilled artisan would recognize, when a user slides switch 140 back to the ‘OFF’ position to allow image transfer to resume, that action would trigger image data transmission of user selected arbitrary media content from wireless through the wireless communications network for display. Instead, Patent Owner’s argument only addresses when a user slides switch 140 to the “ON” position to stop image transmission. On this record, we determine that Petitioner’s evidence and analysis shows sufficiently that Uchida and Grimshaw disclose this last claim element of claim 1. 4. Conclusion After considering Petitioner’s evidence and argument, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of claim 1 based on the combination of Uchida and Grimshaw (Ground 2). We also note that both parties rely on substantially the same evidence and arguments to address independent claims 9, 16, and 21. See Pet. 49–59 (claim 9), 64–66 (claim 16), 67 (claim 21); Prelim. Resp. 34–47 (claims 9, 16, 21). Therefore, our determination for claim 1 applies equally to claims 9, 16, and 21.” slip op. at 16
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,422,951 - Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. v. Secure Wi-Fi LLCInstitution deniedPTAB · Mar 24, 2025 · IPR2024-01369 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution under Fintiv, finding the factors holistically favored discretionary denial of review.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“and Trademark Office under 37 C.F.R. § 42.4(a), we may only institute an inter partes review 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); see also 37 C.F.R. § 42.108(c). However, institution of inter partes review 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 below, we exercise our discretion not to institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“A holistic balancing of the Fintiv factors weighs in favor of discretionary denial of the Petition. As discussed above, factor 2 weighs heavily in favor of discretionary denial because the district court is likely to address patentability issues at trial before we would issue a final written decision. Factor 4 weighs in favor of discretionary denial, as does Factor 5 at least to some degree. Factors 1 and 6 are neutral. Factor 3 weighs against discretionary denial, but this factor does not outweigh the other factors under the circumstances of this case. Thus, the evidence of record favors exercising our discretion to deny institution of an inter partes review.” slip op. at 19
- Parallel petitionsNot reached
“patent. See Pet. 1; PO Resp. 43; Pet. Reply 4–5; Pet. Sur-reply 3–4. Patent Owner argues that Petitioner failed to justify the filing of two petitions challenging the same patent, and has not provided a ranking of the petitions or explained the differences between the two petitions. Prelim. Resp. 43 (citing Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice Guide”)). Because Petitioner has subsequently ranked this Petition as the first among the two (Pet. Reply 4–5), and because we deny institution based on the Fintiv factors as discussed above, we need not decide whether it was appropriate for Petitioner to file two petitions challenging the ’552 patent.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Other
“Based on the preliminary evidence, Petitioner has not shown that Vardi’s radio resource database from the server, which includes unauthenticated third-party information, teaches the claimed “authenticated access point list” transmitted by or received from the server. Petitioner has not cited to any evidence that a list including previously connected access points and unauthenticated third-party data constitutes the ordinary and customary meaning of the term “authenticated access point list.” To the extent that Petitioner is arguing that the term should be construed in a way that departs from its ordinary and customary meaning, Petitioner has not pointed to evidence for such a departure in the intrinsic record, and we are aware of no such evidence. We note that the ’522 patent states, “[b]y way of example, but not limitation,” that an “authenticated access point may include . . . an access point previously connected with [the] end device.” Ex. 1001, 4:33–36. But this does not appear to suggest that a prior connection is sufficient to authenticate the access point in the context of the ’552 patent.” slip op. at 18
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,961,552
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.