- Google LLC / Lenovo (United States) Inc. v. Ericsson ABAll claims unpatentablePTAB · Mar 23, 2026 · IPR2025-00003 · APJ Norman H Beamer · IPR · Final written decision
Claims 1–8, 10, 12, 14, and 16–20 are unpatentable under § 103; the Board denied Patent Owner’s revised motion to amend.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“[W]ould have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and 2–3 years of practical engineering experience relating to information security systems that employ cryptographic keys to encrypt/decrypt digital data. Additional education could substitute for professional experience, or significant experience in the field could substitute for formal education. Ex. 1003 ¶ 41. Patent Owner agrees with Petitioner’s expert regarding the level of ordinary skill in the art. RMTA 19. Patent Owner’s declarant, Dr. Villasenor, notes that “obviousness must be viewed from the perspective of one of ordinary skill in the field of information security using cryptographic keys for encryption and decryption of digital data, and my opinions are rendered on the basis of the definition of the ordinary artisan set forth in the Petition in view of that further clarification.” Ex. 2010 ¶ 19. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’178 patent specification. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Expert testimonyOther
“In reply, Patent Owner substantially repeats its arguments against Petitioner’s reliance on Peterka for the claim 1 content encryption key identifiers requirements. Reply RMTA 8–9 (citing Ex. 1005 ¶ 121; Ex. 2010 ¶¶ 89, 93–95); see RMTA 14–15. We are not persuaded by these arguments for the reasons discussed in Section III.D.2.e)(2) above.” slip op. at 65
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner argues that there was no motivation to combine Peterka with Suzuki because Petitioner has argued that “Peterka can already identify content keys by using the allegedly unique sequence numbers or time stamps assigned to each message carrying a single content key.” PO Resp. 41–42 (citing Pet. 25). Patent Owner also challenges motivation to combine Suzuki because it “is not directed to a pay-by-time, pay-per-view, or subscription distribution model, in which a content key grants access to content that different clients must individually decide to purchase in discrete units or increments.” Id. at 36–37. Petitioner responds that, because Peterka disclosed alternative embodiments that did not use sequence numbers or time stamps to identify EMM/ECM messages, one of ordinary skill would have been motivated specifically assign identifications to individual keys as taught in Suzuki. Reply 22 (citing Pet. 26). Petitioner also argues that whether Suzuki was directed to unpurchased content was irrelevant, because Suzuki is cited to show multiple key responses were conventional. Id. at 19–20. Patent Owner does not otherwise specifically address the issue of motivation to combine Peterka, Suzuki, and Bocharov. See generally PO Resp. Nonetheless the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378. We find, based on the record, that Petitioner has proved by a preponderance of the evidence that a person of ordinary skill in the art would have had reason to combine the teachings of Peterka, Suzuki, and Bocharov as proffered by Petitioner with a reasonable expectation of success.” slip op. at 45
- ScopeMotion to amend, deniedDenied
“We agree with Petitioner that the substitute claims are broadening. Because the amended wording only requires the key request to be made “in response to detecting” the boundary, rather than “ahead of” the boundary, the request can occur before or after the boundary. This is not a fanciful or unlikely possibility — such delayed requests are specifically contemplated by the ’178 patent: [I]f the packager 104 is unable to obtain a new content encryption key from the WFM 102 prior to the expiration of the current content encryption key, the packager 104 will continue to use the current content encryption key until such time as it is able to obtain a new key from the WFM 102. Ex. 1001, 6:32–37. It should be noted that the fixed period duration for key rotation may be viewed as a "target" period, as the packager 104 may not expire a key on the exact boundary. Ex. 1001, 8:9–11. The key expiration time from the WFM 102 may be viewed as a "suggested" expiration time, as the packager 104 may not be able to expire the key at the exact specified time.” slip op. at 56
Patent outcomesUS 9,313,178 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,313,178 - Google LLC / Lenovo (United States) Inc. v. Ericsson ABAll claims unpatentablePTAB · Mar 23, 2026 · IPR2025-00004 · APJ Georgianna W Braden · IPR · Final written decision
Claims 1–7, 9, 11–17, and 19 are unpatentable under §103; the revised motion to amend proposing substitute claims 21–36 is denied.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Board first must determine whether the motion to amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121.” Lectrosonics, Paper 15 at 4 (PTAB Feb. 25, 2019) (precedential). Accordingly, a patent owner must provide a claim listing reproducing each proposed substitute claim, and must make an initial showing to demonstrate the following: (1) the amendment proposes a reasonable number of substitute claims; (2) the proposed claims are supported in the original disclosure (and any earlier filed disclosure for which the benefit of the earlier filing date is sought); (3) the amendment responds to a ground of unpatentability involved in the trial; and (4) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter. See 35 U.S.C. § 326(d); 37 C.F.R. § 42.121.” slip op. at 60
- Expert testimonyOther
“Accordingly, we agree with Petitioner’s contentions regarding the” slip op. at 28
- Skill levelOther
“C. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors” slip op. at 14
Patent outcomesUS 11,122,313 unpatentableNonecites Phillips · KSR · GrahamPatents in suitUS 11,122,313 - Apple Inc. v. Varia Holdings LLCInstitutedPTAB · Mar 11, 2025 · IPR2024-01363 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–32 and all grounds, finding a reasonable likelihood that Apple would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We do not agree that Zalewski is substantively identical to Willgert. As discussed below in Section IV.D.4.c), Zalewski disclosed an RFID transponder in a removable cover for a phone that was completely separate from the voice call components of the telephone itself. Ex. 2001, 7:63–8:3. Based on this, Applicant successfully distinguished Zalewski because the RFID transponder functionality, being contained in a removable cover, was completely independent of the phone device, and thus the claim requirement of a “communication device determining the mobile communication device is in an operational space” was not met. Ex. 1002, 94–95. On this basis, Applicant also argued that claim requirements of switching between a voice call state and an RFID transponder state were not met. Ex. 1008, 18, 91, 134–135, 155; Ex. 1002, 530. In contrast, Willgert discloses an RFID transponder that is integrated with a mobile telephone, and so it cannot be distinguished on the basis that was used for Zalewski. Ex. 1004 ¶ 32. Accordingly, we decline to exercise discretion to deny institution pursuant to 35 U.S.C. § 325(d).” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to challenged claims 1–32 and the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[W]ould have been someone knowledgeable in mobile communication devices and components used therein, cellular radio systems, and wireless communications, such as those used for voice calling and radio frequency identification (RFID). That person would have at least a Bachelor’s degree in Electrical Engineering, with a background in radio frequency communications as well as approximately two years of experience working with or researching radio frequency communication systems. Ex. 1003 ¶ 20. Patent Owner does not offer a specific definition of a person of ordinary skill in the art. See, generally, Prelim. Resp. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’947 patent specification. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDecided for patent owner
“not agree, based on the current record, that the claims should be construed to encompass a device that has independent RFID transponder components that are separate from and independent of the components that provide voice call capability. During prosecution of related applications, in distinguishing Zalewski, Applicant disavowed such a broad interpretation. For example, Applicant asserted: The term “transceiver” . . . is well understood by those of ordinary skill in the art. One of ordinary skill in the art would not reasonably interpret a "transceiver" so broadly as to incorporate an entire mobile device's circuitry, and in particular to be read on by two separate transmitters . . . . Ex. 1008, 40. Also: [A] person having ordinary skill in the art would have understood “a transceiver of a mobile communication device” to be a transmitter and receiver combined in a single package/housing/unit and sharing at least some common circuitry for both transmission and reception located within a mobile communication device. . . . . A person having ordinary skill in the art would understand Applicants’ disclosure as describing a single transceiver that can be switched from a first state in which it transmits voice call signals to a second state in which it transmits RFID signals. Id. at 92, 94. However, Petitioner also argues, and provides expert testimony in support, that it would have been obvious to integrate Willgert’s communications unit with the voice call capability of a mobile telephone. Pet. 53–54 (citing Ex. 1003 ¶¶ 129–130). At this stage of the proceeding, we find support for this position, including the fact that Willgert specifically teaches that the communications unit can be integrated into a mobile telephone. Ex. 1004 ¶ 32. Patent Owner challenges this argument based on the statement in Willgert that the communications unit can be “constructed so that the transponder will also function when the mobile telephone is switched-off.” Prelim. Resp. 13–15 (citing Ex. 1004 ¶ 31). However, Willgert provides this as one option, and we do not find that this statement teaches away from a fully integrated approach alternative.” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,405,947 - Apple Inc. v. Varia Holdings LLCInstitutedPTAB · Mar 11, 2025 · IPR2024-01364 · APJ Norman H Beamer · IPR · Institution
The Board instituted inter partes review of claims 1–39 on all grounds in the Petition, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Under 35 U.S.C. § 325(d), the Board may exercise discretion to deny a petition that presents the same or substantially the same art or arguments as were previously presented to the Office. See 35 U.S.C. § 325(d); 37 C.F.R. § 42.4(a) (providing that the Board institutes on behalf of the Director). The Board has outlined factors it considers in determining whether to exercise discretion to deny institution under § 325(d): (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8, 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton Dickinson”). The Becton Dickinson factors apply when a petition relies on art or arguments previously presented to the Office during any proceeding pertaining to the challenged patent, including reexamination, reissue, and AIA post-grant proceedings. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8–10 (PTAB Feb. 13, 2020) (precedential). Advanced Bionics explains how the Becton Dickinson factors fit into a two-part framework that examines: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to challenged claims 1–19 and the grounds raised in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“Petitioner argues that this combination would have been motivated by the fact that the Willgert teaches that integrating its communications unit into a mobile telephone designed for Bluetooth communication was a “highly user-friendly application,” and that it was well known practice to use a Bluetooth headset wirelessly communicating with the phone to enable hands-free phone calls, as specifically taught by Mooney. Pet. 12–14 (citing Ex. 1004 ¶¶ 8, 30–32; Ex. 1005, Fig. 3, ¶¶ 7, 39, 46–48; Ex. 1021; Ex. 1003 ¶¶ 72–76). Petitioner further argues that Bluetooth headsets were widely available, that incorporating the headset involved known methods yielding predictable results, and that one of ordinary skill would have reasonably expected to succeed in combining the teachings of Willgert and Mooney. Id. at 15–16 (citing Ex. 1004 ¶¶ 8, 10; Ex. 1005, ¶ 8; Ex. 1017, 1, 3; Ex. 1021, 2; Ex. 1003 ¶¶ 77–79). Patent Owner does not address the issue of motivation to combine Willgert and Mooney. See generally Prelim. Resp. We find, based on the current record, that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combined teachings of Willgert and Mooney.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAOther
“Willgert/Mooney combination does not teach or suggest the voice call signal requirements of the claims. As stated in the ’984 patent, the voice call signals relate to “the primary function of [the mobile communications device], i.e. to facilitate a user in communicating with another user of another communication device.” Ex. 1001, 3:47–49. The proffered combination of wirelessly connecting a Bluetooth headset to the Bluetooth receiver/transmitter of Willgert’s communications unit includes the fact that the Willgert communications unit is integrated into a mobile telephone. Ex. 1004 ¶¶ 30, 32. Thus, when the telephone is being used for its “primary purpose” of communicating with another user, the same voice call signal involved in that communication is also being transmitted from the telephone to the Bluetooth headset. We see no reason why the claimed “voice call signals” must be construed to exclude such signals. Patent Owner declined to address claim construction in its Preliminary Response, but is free to explore this issue post-institution. We also disagree, based on the current record, with Patent Owner’s assertion that Willgert’s RFID transponder 2 does not transmit “RFID transponder data” or “RFID transponder signals.” The very term itself — RFID transponder — as well as the explicit disclosures in Willgert, establish that the RFID transponder transmits RFID signals and data. Ex. 1004 ¶¶ 4, 14–19. Although, as Patent Owner points out, the ’984 patent discloses embodiments that “emulate” an RFID transponder, there is no reason to confine the scope of the claims to the disclosed embodiments and there is nothing in the ’984 specification or claims that disavows including Willgert’s RFID transponder within the scope of the claims. Also, Patent Owner’s reliance on the prosecution history regarding the Zalewski patent is misplaced. As Patent Owner has explained, Zalewski disclosed “‘an RFID transponder 110’ embedded in a removable cover for a phone or other device ‘such as an MP3 player.’” Prelim. Resp. 14 (citing Ex. 2001, 7:63–8:3). Based on this, Applicant successfully distinguished Zalewski because the RFID transponder functionality, being contained in a removable cover, was completely independent of the phone device, and thus the claim requirements of a transceiver or transmitter switching between a voice call state and an RFID transponder state were not met. Ex. 1002, 18, 91, 134–135, 155; Ex. 1009, 530. Zalewski was not distinguished based on whether or not the RFID transponder was emulated. Again, Patent Owner is free to explore the scope of the claim terms “transceiver” and “transmitter” post-institution.” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,127,984 - PTAB · Mar 7, 2025 · IPR2024-01336 · APJ Russell E Cass · IPR · Institution
The Board instituted inter partes review of claims 1–4, 6–10, 13–14, 17, and 21–25 on all petitioned grounds, finding a reasonable likelihood of unpatentability and no basis for General Plastic denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“we determine that discretionary denial is not appropriate in the circumstances of this case. With respect to General Plastic factor 1, we agree with Patent Owner that Cisco is a customer of Petitioner and was identified by Petitioner as a real party in interest, and therefore has a “significant relationship” with Petitioner under Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 at 9 (PTAB Apr. 2, 2019) (precedential) (“Valve”). However, we are mindful of the Director’s finding in Code200 that “General Plastic factor 1 must be read in conjunction with factors 2 and 3,” and that “[w]here the first-filed petition under factor 1 was discretionarily denied or otherwise was not evaluated on the merits, factors 1–3 only weigh in favor of discretionary denial when there are ‘roadmapping’ concerns under factor 3 or other concerns under factor 2.” Code200 at 5.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an inter partes review, the petitioner must show with particularity why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b) (2020). The burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention would have had “at least a bachelor’s in EE/CE/CS, physics, or equivalent, and two years of experience with cellular telecommunications, radio-access network architectures, protocols and signal propagation in wireless networks.” Pet. 4 (citing Ex. 1003 ¶¶ 50–51). Petitioner further states that “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner does not offer a proposed level of ordinary skill at this stage of the proceeding. See Prelim. Resp. At this stage of the proceeding, we adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the ’802 patent and the asserted prior art of record.” slip op. at 19
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingOther
“III. MOTION FOR JOINDER As noted above, Petitioner also filed a Motion for Joinder to the Samsung IPR. Paper 3. Because the Samsung IPR has been terminated, we find that the Motion for Joinder is moot, and dismiss it accordingly.” slip op. at 20
Discretionary denialcites KSR · GrahamPatents in suitUS 7,924,802 - Encube Ethicals PTV. Ltd. v. Dermavant Sciences GmbHAdverse judgmentPTAB · Mar 7, 2025 · IPR2024-00834 · APJ Tawen Chang · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on all challenged claims, 1–4, 6–10, 16, 18, 21, and 22, following their disclaimer.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Terminate Proceeding and Parties’ Joint Motion for Entry of Adverse Judgment (collectively “Motion”). The parties jointly request that the Board enter adverse judgment in light of the disclaimer filed by Patent Owner disclaiming all challenged claims. Mot. 1 (citing 37 C.F.R. § 42.73(b)(2)). The Motion attaches as an exhibit a disclaimer under 37 C.F.R. § 1.321(a), filed January 28, 2025, of claims 1–4, 6–10, 16, 18, 21, and 22 of the ’088 patent, which constitute all of the claims challenged in the inter partes review. Ex. 2001; Paper 1, 3.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Accordingly, we grant the Parties’ Joint Motion for Entry of Adverse Judgment. This Adverse Judgment is sufficient to dispose of this proceeding and Patent Owner’s Motion to Terminate is denied as moot.1” slip op. at 3
NonePatents in suitUS 11,590,088 - PTAB · Jan 13, 2025 · IPR2024-00183 · APJ Robert A Pollock · IPR · Institution
The Board instituted IPR on claims 1–6, 10, 11, 13–20, 22, 23, and 26–33 because the asserted combinations of ICMSF, Hughes, and Price showed a reasonable likelihood that at least one claim was obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“314. An inter partes review may not be instituted unless “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). Further, a decision to institute may not do so on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a). After considering the evidence and arguments presented in the Petition, we determine that Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’584 patent is unpatentable. Accordingly, we institute an inter partes review as to the challenged claims of the ’584 patent on the grounds of unpatentability set forth in the Petition. A.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the invention (POSA/POSITA), “would most likely have an advanced degree in microbiology, food science, or animal science and at least two years of work experience but may alternatively have a bachelor’s degree in those areas and at least four years of experience with validation methodologies.” Pet. 11. (citing Ex. 1041 ¶¶ 22–24). Petitioner further contends that a person of ordinary skill in the art would have had “a working knowledge of microbiology,” “would have been involved in developing sampling and testing methodologies for analysis of food products (“validation methodologies”),” and “would have been familiar with relevant scientific literature and industry regulations, directives, and guidelines relating to validation methodologies.” Id.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We agree with Patent Owner that the term “lots” does not require construction because on the current record, there is no controversy over the meaning of the term, and neither Petitioner nor Patent Owner identify any way that claim construction impacts the decision. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“This definition requires that a “validation” determines that “a particular sample tests negative.” The initial definition sentence makes no mention of “cleared for release” as necessary for “validation.” Rather, the definition only refers to “cleared for release” in the more limited situation where a particular composite sample “tests negative all single-unit production lot samples,” and even then, the “cleared for release” is a separate step that occurs after the samples are “validated.”” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 7,534,584 - Motorola Mobility LLC v. Largan Precision Co., Ltd.Institution deniedPTAB · Jan 3, 2025 · IPR2024-00689 · APJ Norman H Beamer · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–34 were obvious over Fukaya or Cai.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“3. Analysis Petitioner has not shown a reasonable likelihood that a person of ordinary skill, as of the August 2014 priority date of the ’845 patent, would have been motivated to modify the Fukaya seven-lens system to change the bi-convex/bi-concave design of the sixth and seventh lenses to a double gullwing/meniscus design. Redesigning a lens system is extraordinarily complicated, requiring protracted trial-and-error experimentation with nearly an infinite number of possible solutions in a highly multidimensional space. Ex. 1010, 11; Ex. 1011, 169. We conclude that Petitioner and its expert navigate along one path out of many to the particular redesign they propose using improper result-oriented hindsight as a guide.” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“paragraph) (“Becton Dickinson”). The Becton Dickinson factors apply when a petition relies on art or arguments previously presented to the Office during any proceeding pertaining to the challenged patent, including reexamination, reissue, and AIA post-grant proceedings. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6, 8–10 (PTAB Feb. 13, 2020) (precedential). Advanced Bionics explains how the Becton Dickinson factors fit into a two-part framework that examines: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review. Id. at 8–9. Here, as discussed above, the same art that Petitioner relies on — Fukaya and Tsai/Cai — was previously presented to the Office. Thus, Patent Owner has shown that the first part of the Advanced Bionics framework is satisfied. Turning to the second part of the Advanced Bionics framework, we determine that Petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“3. Analysis Petitioner has not shown a reasonable likelihood that a person of ordinary skill, as of the August 2014 priority date of the ’845 patent, would have been motivated to modify the Fukaya seven-lens system to change the bi-convex/bi-concave design of the sixth and seventh lenses to a double gullwing/meniscus design. Redesigning a lens system is extraordinarily complicated, requiring protracted trial-and-error experimentation with nearly an infinite number of possible solutions in a highly multidimensional space. Ex. 1010, 11; Ex. 1011, 169. We conclude that Petitioner and its expert navigate along one path out of many to the particular redesign they propose using improper result-oriented hindsight as a guide. Petitioner’s expert’s recitation of the at least 25 steps taken to journey from the original Fukaya design to the modified design is instructive: (i) inputting into lens design software the original Fukaya lens parameters; (ii) evaluating its off-axis performance; (iii) increasing the number of analysis field points; (iv) deciding to focus on lenses 5–7, which requires that all aspherics be varied; (v) modifying lens 6 aspherics; (vi) adding CARD operands in the merit function to change the curvature radius values on the lens surfaces; (vii) adding FTGT operands to control spacing between the lenses and lens thicknesses; (viii) adjusting CENY to set the field height; (ix) using a 20x20 rectangular grid of rays for the spot rms part of the merit function; (x) making all aspherics and conics variable, except on the objectside surface of the seventh lens; (xi) increasing the f-number to 2; (xii) increasing sampling to 40x40; (xiii) targeting a positive curvature on the image-side surface of lens 6 with the CVGT 0 operand; (xiv) increasing FTGT to 0.2 on lens 7; (xv) increasing the focal length of lens 6 to 3mm; (xvi) targeting a positive curvature on the object side of lens 7 with the CVGT 0 operand; (xvii) reducing the power of lens 7; (xviii) increasing the target focal length on lens 6; (xix) releasing the focal length constraint on lens 7; (xx) releasing the focal length constraints on lenses 5 and 6; (xxi) reducing f-number in steps to 1.65; (xxii) adding DIMX operands; (xxiii) freezing the conics on surfaces 10 and 14; (xxiv) adding FCGT and FCGS commands to limit field curvature; (xxv) adding LONAs into the merit function — thus “resulting” in the Fukaya lens system with a meniscus-gullwing lens pair for lenses 6 and 7.5 Ex. 1001 ¶¶ 82–85. We are not persuaded that this exercise is sufficiently free of hindsight motivation. For purposes of this Decision, we accept that gullwing/meniscus designs were well-known as of the priority date.6 However, the fact that such designs were available and could have been used does not mean that they would have been used. Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). We agree with Patent Owner that there is no evidence that that Fukaya was in need of any improvements to its compactness, aberrations, or chief ray angle. Prelim. Resp. 27. As Patent Owner establishes, the original Fukaya track length is actually shorter than the track length of the redesigned lens systems proposed by Petitioner, aberrations are properly corrected in the unmodified Fukaya lens system, and Petitioner’s redesign provides only minimally improved off-axis relative illumination. Id. at 27–33.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner
“ordinary skill, as of the August 2014 priority date of the ’845 patent, would have been motivated to modify the Fukaya seven-lens system to change the bi-convex/bi-concave design of the sixth and seventh lenses to a double gullwing/meniscus design. Redesigning a lens system is extraordinarily complicated, requiring protracted trial-and-error experimentation with nearly an infinite number of possible solutions in a highly multidimensional space. Ex. 1010, 11; Ex. 1011, 169. We conclude that Petitioner and its expert navigate along one path out of many to the particular redesign they propose using improper result-oriented hindsight as a guide. Petitioner’s expert’s recitation of the at least 25 steps taken to journey from the original Fukaya design to the modified design is instructive: (i) inputting into lens design software the original Fukaya lens parameters; (ii) evaluating its off-axis performance; (iii) increasing the number of analysis field points; (iv) deciding to focus on lenses 5–7, which requires that all aspherics be varied; (v) modifying lens 6 aspherics; (vi) adding CARD operands in the merit function to change the curvature radius values on the lens surfaces; (vii) adding FTGT operands to control spacing between the lenses and lens thicknesses; (viii) adjusting CENY to set the field height; (ix) using a 20x20 rectangular grid of rays for the spot rms part of the merit function; (x) making all aspherics and conics variable, except on the objectside surface of the seventh lens; (xi) increasing the f-number to 2; (xii) increasing sampling to 40x40; (xiii) targeting a positive curvature on the image-side surface of lens 6 with the CVGT 0 operand; (xiv) increasing FTGT to 0.2 on lens 7; (xv) increasing the focal length of lens 6 to 3mm; (xvi) targeting a positive curvature on the object side of lens 7 with the CVGT 0 operand; (xvii) reducing the power of lens 7; (xviii) increasing the target focal length on lens 6; (xix) releasing the focal length constraint on lens 7; (xx) releasing the focal length constraints on lenses 5 and 6; (xxi) reducing f-number in steps to 1.65; (xxii) adding DIMX operands; (xxiii) freezing the conics on surfaces 10 and 14; (xxiv) adding FCGT and FCGS commands to limit field curvature; (xxv) adding LONAs into the merit function — thus “resulting” in the Fukaya lens system with a meniscus-gullwing lens pair for lenses 6 and 7.5 Ex. 1001 ¶¶ 82–85. We are not persuaded that this exercise is sufficiently free of hindsight motivation. For purposes of this Decision, we accept that gullwing/meniscus designs were well-known as of the priority date.6 However, the fact that such designs were available and could have been used does not mean that they would have been used. Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). We agree with Patent Owner that there is no evidence that that Fukaya was in need of any improvements to its compactness, aberrations, or chief ray angle. Prelim. Resp. 27. As Patent Owner establishes, the original Fukaya track length is actually shorter than the track length of the redesigned lens systems proposed by Petitioner, aberrations are properly corrected in the unmodified Fukaya lens system, and Petitioner’s redesign provides only minimally improved off-axis relative illumination. Id. at 27–33.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,366,845 - Google LLC v. Proxense, LLCInstitution deniedPTAB · Nov 20, 2024 · IPR2024-01318 · APJ Thu A Dang · IPR · Institution
The Board denied institution on claims 1, 5, 6, 8–11, 13, and 14 because the related original petition had already been instituted, and denied joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“claims 1, 5, 6, 8–11, 13, and 14 of U.S. Patent No. 8,646,042 B1 (“the ’042 patent”) (Paper 1) and a Motion for Joinder (“Motion”) (Paper 3) to join Microsoft’s instituted proceeding in IPR2024-00573 (“Microsoft IPR”), along with a Notice Ranking Multiple Petitions (“Notice”) (Paper 4). Petitioner also acknowledges that it previously filed a petition (“Original Petition”) for inter partes review of claims 1–6, 8–15, and 17–20 of the ’042 patent in IPR2024-00782. Notice 1. Thus, Petitioner “requests that action on this motion be held in abeyance until, and only if, the Board declines to institute Petitioner’s Original Petition.” Id.; see also Motion 1. The Board has instituted an inter partes review of the ’042 patent in IPR2024-00782. See IPR2024-00782, Paper 13. That is, we have not declined to institute Petitioner’s Original Petition in IPR2024-00782. Id. Accordingly, the condition on which Petitioner’s Petition and Motion for Joinder is based, i.e., “in abeyance until, and only if, the Board declines to institute [in IPR2024-00782],” has not come to pass. Therefore, we deny the Petition and the Motion for Joinder.” slip op. at 2
- Parallel petitionsDenied
“Here, Petitioner acknowledges that it “has two concurrent petitions challenging the validity of the same patent.” Notice 1. Although Petitioner provides “a ranking of the petitions in the order in which it wishes the Board to consider the merits” and “a succinct explanation of the differences” (id.), Petitioner requests that “should the Board decide to institute only a single petition against the ’042 patent, . . . the Board institute Petitioner’s Original Petition (in IPR2024-00782).” Id. Since, as discussed above, the Board has instituted an inter partes review of the ’042 patent in IPR2024-00782, we deny the Petition and the Motion for Joinder in the current IPR.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“claims 1, 5, 6, 8–11, 13, and 14 of U.S. Patent No. 8,646,042 B1 (“the ’042 patent”) (Paper 1) and a Motion for Joinder (“Motion”) (Paper 3) to join Microsoft’s instituted proceeding in IPR2024-00573 (“Microsoft IPR”), along with a Notice Ranking Multiple Petitions (“Notice”) (Paper 4). Petitioner also acknowledges that it previously filed a petition (“Original Petition”) for inter partes review of claims 1–6, 8–15, and 17–20 of the ’042 patent in IPR2024-00782. Notice 1. Thus, Petitioner “requests that action on this motion be held in abeyance until, and only if, the Board declines to institute Petitioner’s Original Petition.” Id.; see also Motion 1. The Board has instituted an inter partes review of the ’042 patent in IPR2024-00782. See IPR2024-00782, Paper 13. That is, we have not declined to institute Petitioner’s Original Petition in IPR2024-00782. Id. Accordingly, the condition on which Petitioner’s Petition and Motion for Joinder is based, i.e., “in abeyance until, and only if, the Board declines to institute [in IPR2024-00782],” has not come to pass. Therefore, we deny the Petition and the Motion for Joinder.” slip op. at 2
Discretionary denialPatents in suitUS 8,646,042 - Google LLC v. Proxense, LLCInstitution deniedPTAB · Nov 20, 2024 · IPR2024-01319 · APJ Thu A Dang · IPR · Institution
The Board denied institution on claims 1–20 because Google’s conditional request was not triggered after its earlier petition was instituted; it also denied joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“claims 1–20 of U.S. Patent No. 9,679,289 B1 (“the ’289 patent”) (Paper 1) and a Motion for Joinder (“Motion”) (Paper 3) to join Microsoft’s instituted proceeding in IPR2024-00407 (“the Microsoft IPR”), along with a Notice Ranking Multiple Petitions (“Notice”) (Paper 4). Petitioner also acknowledges that it previously filed a petition (“Original Petition”) for inter partes review of claims 1–20 of the ’289 patent in IPR2024-00783. Notice 1. Thus, Petitioner “requests that action on this motion be held in abeyance until, and only if, the Board declines to institute Petitioner’s Original Petition.” Id.; see also Motion 1. The Board has instituted an inter partes review of the ’289 patent in IPR2024-00783. See IPR2024-00783, Paper 12. That is, we have not declined to institute Petitioner’s Original Petition in IPR2024-00783. Id. Accordingly, the condition on which Petitioner’s Petition and Motion for Joinder is based, i.e., “in abeyance until, and only if, the Board declines to institute [in IPR2024-00783],” has not come to pass. Therefore, we deny the Petition and the Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“claims 1–20 of U.S. Patent No. 9,679,289 B1 (“the ’289 patent”) (Paper 1) and a Motion for Joinder (“Motion”) (Paper 3) to join Microsoft’s instituted proceeding in IPR2024-00407 (“the Microsoft IPR”), along with a Notice Ranking Multiple Petitions (“Notice”) (Paper 4). Petitioner also acknowledges that it previously filed a petition (“Original Petition”) for inter partes review of claims 1–20 of the ’289 patent in IPR2024-00783. Notice 1. Thus, Petitioner “requests that action on this motion be held in abeyance until, and only if, the Board declines to institute Petitioner’s Original Petition.” Id.; see also Motion 1. The Board has instituted an inter partes review of the ’289 patent in IPR2024-00783. See IPR2024-00783, Paper 12. That is, we have not declined to institute Petitioner’s Original Petition in IPR2024-00783. Id. Accordingly, the condition on which Petitioner’s Petition and Motion for Joinder is based, i.e., “in abeyance until, and only if, the Board declines to institute [in IPR2024-00783],” has not come to pass. Therefore, we deny the Petition and the Motion for Joinder.” slip op. at 2
- Parallel petitionsDenied
“Here, Petitioner acknowledges that it “has two concurrent petitions challenging the validity of the same patent.” Notice 1. Although Petitioner provides “a ranking of the petitions in the order in which it wishes the Board to consider the merits” and “a succinct explanation of the differences” (id.), Petitioner requests that “should the Board decide to institute only a single petition against the ’289 patent, . . . the Board institute Petitioner’s Original Petition (in IPR2024-00783).” Id. Since, as discussed above, the Board has instituted an inter partes review of the ’289 patent in IPR2024-00783, we deny the Petition and the Motion for Joinder in the current IPR.” slip op. at 2
Discretionary denialPatents in suitUS 9,679,289
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.