• Samsung Electronics Co., Ltd. v. CM HK LimitedInstituted
  PTAB · Dec 18, 2025 · IPR2025-01071 · APJ Benjamin D M Wood · IPR · Institution

  The Board instituted IPR of claims 1–7, 12, 14, and 25 because Petitioner showed a reasonable likelihood of prevailing on its § 103 obviousness challenge over Bassompiere.

  RulingsInstitution decision

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

    “We have authority under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . 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). On the preliminary record before us, we determine that Petitioner has satisfied this threshold requirement, and therefore we institute inter partes review of claims 1–7, 12, 14, and 25 of the ’687 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not offer any reason why we should deviate from the Board’s determinations in the prior IPRs that one of ordinary skill in the art would have had knowledge of Kalman filters and quaternion mathematics. Nor are we aware of any such reason. On the contrary, the Board’s prior determinations are consistent with the level of ordinary skill reflected by prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Bassompiere, for example, teaches using a data merging algorithm that is, “[a]dvantageously,” extended Kalman filtering. Ex. 1006, 4:17. Bassompiere also teaches using quaternions to determine a device’s pitch and roll about a horizontal reference frame. Id. at 6:3–8, 20:10–21:1. Patent Owner argues that Dr. Sarrafzadeh’s testimony regarding the level of skill in the art in this proceeding contradicts his testimony in the prior IPRs, which did not include knowledge of Kalman filters and quaternion mathematics in his definition of the level of ordinary skill in the art. Prelim. Resp. 24–26. Patent Owner asserts that this contradiction “undermin[es] his credibility.” Id. at 26. We disagree. The testimony Dr. Sarrafzadeh provided in the earlier IPRs obviously preceded the Board’s determinations in those proceedings that, on the whole record, including the testimony of then-Patent Owner’s declarant, the level of ordinary skill included knowledge of Kalman Filters and quaternions. Dr. Sarrafzadeh’s testimony in this proceeding reasonably aligns with those determinations. Accordingly, we adopt Petitioner’s definition of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 12

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

    “The parties agree that the claimed “spatial reference frame” is associated with a device, has its origin at the same point in the device, and has axes that are always fixed with respect to the device. The only disagreement is whether that device is a “3D pointing device” or an “electronic device.” The Specification indicates that “electronic device” encompasses 3D pointing devices as well as, e.g., smartphones and navigation equipment, and therefore is the broader term. Ex. 1001, 13:20– 23. At this stage of the proceeding, we determine that the threshold question of institution can be decided under either construction, because Patent Owner does not dispute that the primary asserted reference, Bassompiere, teaches a “spatial reference frame” associated with a 3D pointing device. Pet. 25–27. Therefore, at this stage of the proceeding, we decline to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those [claim] terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where the construction is not material to the dispute). 2. “predicted axial accelerations” Petitioner does not propose a construction for “predicted axial accelerations,” but, in the concurrent California Litigation, contends that it should be accorded its “plain and ordinary meaning.” Ex. 2007, 3. In subsequent briefing that will be discussed more fully below, Petitioner asserts that its declarant, Dr. Sarrafzadeh, “applied the ‘plain and ordinary’ meaning for all claim terms, including the ‘predicted axial accelerations’ term,” in this proceeding. Paper 14, 1. Petitioner also submits in that briefing that “the term ‘axial acceleration’ (whether predicted or measured) . . . ordinarily encompasses three types of acceleration,” i.e., “linear, centrifugal, and gravitational.” Id. at 3, 4. Patent Owner contends that “predicted axial accelerations” should be construed as “[g]ravitational acceleration along the electronic device’s axes derived from the current quaternion.” Prelim. Resp. 18. Patent Owner asserts that “[t]he claims and specification consistently define ‘predicted axial accelerations’ as gravitational accelerations along the device’s axes at time T, derived from the current quaternion.” Id. (citing Ex. 1001, claim 1, 17:18–30, 17:45–52). Patent Owner further submits that “because ‘predicted axial accelerations’ are computed from the current quaternion they only contain gravitational accelerations along the device’s axes.” Id. at 19 (citing Ex. 2023 ¶ 23). Here too, the threshold question of institution can be decided without” slip op. at 14

  • BurdenDecided for petitioner

    “We disagree with Patent Owner’s characterization. The teaching to use quaternions instead of Euler angles comes from Bassompiere, not Dr. Sarrafzadeh. See Ex. 1006, 20:10–11 (“A first variant embodiment consists in replacing the angles of torsion θ and ψ by a quaternion formulation of the same torsion.”). Rather than supplying a missing limitation, we understand Dr. Sarrafzadeh to be explaining how a person of ordinary skill in the art would have implemented Bassompiere’s teaching to use quaternions instead of Euler angles given that person’s knowledge of quaternion mathematics. Patent Owner also argues that “switching from Euler angles to quaternions is not a routine substitution but requires the reengineering of the EKF.” Prelim. Resp. 28. Patent Owner similarly contends that Dr. Sarrafzadeh “devotes nearly twenty pages of his declaration to rewriting Bassompiere’s Euler-based equations ‘in quaternion form,’ and explaining how to convert them back to Euler angles,” and notes that “[a]s other researchers in the field have confirmed, ‘[w]hile implementing orientation tracking using quaternions provides advantages like avoiding gimbal lock, it is significantly more complex than the Kalman filer using Euler angles.’” Prelim. Resp. 32 (citing Ex. 1002, 31–51; quoting Ex. 2027, 1). Patent Owner thus contends that replacing Euler angles with quaternions “is not a ‘trivial’ substitution.” Id. at 32. But Petitioner does not appear to be arguing that replacing Euler angles with quaternions would have been “trivial” or simple, only that doing so was taught by Bassompiere and within the knowledge and capabilities of a person of ordinary skill in the art. Pet. 33–34. We determined above that a skilled artisan had knowledge of extended Kalman filters and quaternion mathematics, and we are required to consider the knowledge and capabilities of a person of ordinary skill in our analysis. Further, at this preliminary stage, Patent Owner’s assertion that the Euler angle/quaternion switch would not have been a routine substitution is supported only with attorney argument, which is entitled to no weight. Icon Health & Fitness, Inc. v. Strava, Inc. 849 F.3d 1034, 1043 (Fed. Cir. 2017). As such, it does not outweigh Dr. Sarrafzadeh’s contrary testimony. See, e.g., Ex. 1002 ¶ 56.” slip op. at 29

  Claim constructioncites Phillips · KSR · Graham
  Patents in suitUS 11,698,687
• Samsung Electronics Co., Ltd. v. CM HK LimitedInstituted
  PTAB · Dec 17, 2025 · IPR2025-01023 · APJ Benjamin D M Wood · IPR · Institution

  The Board instituted IPR on all asserted grounds against claims 1, 3, 7, and 9, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.

  RulingsInstitution decision

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

    “c. Conclusion as to Claim 1 Having reviewed the record and the parties’ arguments, we determine that Petitioner has a reasonable likelihood of prevailing with respect to claim 1, and therefore has satisfied the threshold requirement for institution of inter partes review on the basis of Ground 1. 3. Claims 3, 7, and 9 Petitioner contends that Bassompiere teaches the limitations of claim 3, 7, and 9, and supports its contentions with citations to Bassompiere and to Dr. Sharrafzadeh’s declaration. Pet. 57–63. At this stage of the proceeding, Patent Owner does not raise any arguments specifically directed to these claims. “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). We must “either (1) institute as to all claims challenged in the petition and on all grounds in the petition, or (2) institute on no claims and deny institution.” CTPG at 5–6, 64; see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1359–60 (Fed. Cir. 2018) (stating a decision to institute is “a simple yes-orno institution choice respecting a petition, embracing all challenges included in the petition”). Thus, because we have decided to grant institution on Ground 1 with respect to claim 1, we must do the same for claims 3, 7, and 9.” slip op. at 38

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not offer any reason why we should deviate from the Board’s determinations in the prior IPRs that one of ordinary skill in the art would have had knowledge of Kalman filters and quaternion mathematics. Nor are we aware of any such reason. On the contrary, the Board’s prior determinations are consistent with the level of ordinary skill reflected by prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Bassompiere, for example, teaches using a data merging algorithm that is, “[a]dvantageously,” extended Kalman filtering. Ex. 1006, 4:17. Bassompiere also teaches using quaternions to determine a device’s pitch and roll about a horizontal reference frame. Id. at 6:3–8, 20:10–21:1. Nasiri teaches that quaternions can be used to represent a device’s “orientation in space.” Ex. 1008, 30:27– 30. Patent Owner argues that Dr. Sarrafzadeh’s testimony regarding the level of skill in the art in this proceeding contradicts his testimony in the prior IPRs, which did not include knowledge of Kalman filters and quaternion mathematics in his definition of the level of ordinary skill in the art. Prelim. Resp. 24–26. Patent Owner asserts that this contradiction “undermin[es] his credibility.” Id. at 26. We disagree. The testimony Dr. Sarrafzadeh provided in the earlier IPRs obviously preceded the Board’s determinations in those proceedings that, on the whole record, including the testimony of then-Patent Owner’s declarant, the level of ordinary skill included knowledge of Kalman Filters and quaternions. Dr. Sarrafzadeh’s testimony in this proceeding reasonably aligns with those determinations. Accordingly, for the above reasons, we adopt Petitioner’s definition of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We disagree with Patent Owner’s characterization. The teaching to use quaternions instead of Euler angles comes from Bassompiere, not Dr. Sarrafzadeh. See Ex. 1006, 20:10–11 (“A first variant embodiment consists in replacing the angles of torsion θ and ψ by a quaternion formulation of the same torsion.”). Rather than supplying a missing limitation, we understand Dr. Sarrafzadeh to be explaining how a person of ordinary skill in the art would have implemented Bassompiere’s teaching to use quaternions instead of Euler angles given that person’s knowledge of quaternion mathematics. Patent Owner also argues that “switching from Euler angles to quaternions is not a routine substitution but requires the reengineering of the EKF.” Prelim. Resp. 28. Patent Owner similarly contends that Dr. Sarrafzadeh “devotes nearly twenty pages of his declaration to rewriting Bassompiere’s Euler-based equations ‘in quaternion form,’ and explaining how to convert them back to Euler angles,” and notes that “[a]s other researchers in the field have confirmed, ‘[w]hile implementing orientation tracking using quaternions provides advantages like avoiding gimbal lock, it is significantly more complex than the Kalman filer using Euler angles.’” Prelim. Resp. 32–33 (citing Ex. 1002, 31–51; quoting Ex. 2027, 1). Patent Owner thus contends that replacing Euler angles with quaternions “is not a ‘trivial’ substitution.” Id. at 33. But Petitioner does not appear to be arguing that replacing Euler angles with quaternions would have been “trivial” or simple, only that doing so was taught by Bassompiere and within the knowledge and capabilities of a person of ordinary skill in the art. We determined above that a skilled artisan had knowledge of extended Kalman filters and quaternion mathematics such knowledge, and we are required to consider the knowledge and capabilities of a person of ordinary skill in our analysis. Further, at this preliminary stage, Patent Owner’s assertion that the Euler angle/quaternion switch would not have been a routine substitution is supported only with attorney argument, which is entitled to no weight. Icon Health & Fitness, Inc. v. Strava, Inc. 849 F.3d 1034, 1043 (Fed. Cir. 2017). As such, it does not outweigh Dr. Sarrafzadeh’s contrary testimony. See, e.g., Ex. 1002 ¶ 56.” slip op. at 30

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

    “The parties agree that the claimed “spatial reference frame” is associated with a device, has its origin at the same point in the device, and has axes that are always fixed with respect to the device. The only disagreement is whether that device is a “3D pointing device” or an “electronic device.” The Specification indicates that “electronic device” encompasses 3D pointing devices as well as, e.g., smartphones and navigation equipment, and therefore is the broader term. Ex. 1001, 8:35–39. At this stage of the proceeding, we determine that the threshold question of institution can be decided under either construction, because Patent Owner does not dispute that the primary asserted reference, Bassompiere, teaches a “spatial reference frame” associated with a 3D pointing device. Pet. 30–31. Therefore, at this stage of the proceeding, we decline to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those [claim] terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where the construction is not material to the dispute).” slip op. at 15

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,852,846
• Reolink Innovation Inc. / Shenzhen Reolink Technology Co., Ltd. v. Throughtek Technology (Shenzhen) Co., Ltd. And Throughtek Co., Ltd.All claims unpatentable
  PTAB · Dec 15, 2025 · IPR2024-01193 · APJ David C Mckone · IPR · Final written decision

  Claims 1–3, 5, 7–13, 15–19, and 23–25 are unpatentable: claims 1, 7, 8, 10, 11, 15, 16, 18, 19, and 23–25 as anticipated by Zhang; all challenged claims also as obvious over at least one …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering and two years of work experience with network and communication technologies.” Pet. 5 (citing Ex. 1003 ¶¶ 13–15). Patent Owner does not contest Petitioner’s proposal or provide a proposal of its own. On the complete record, we adopt Petitioner’s description of the level of ordinary skill in the art, as it is consistent with the technology described in the ’448 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededTerm construed board ownMixed

    “construction of “feature flag” is inconsistent with the language of claim 8, which states that “the feature flag indicates that the running state of the second apparatus is the sleep state.” Petitioner also argues that Patent Owner’s proposal is not supported by claim 24, which depends from claim 23 and states that “the feature flag is located at a header of the sleep login packet.” Id. at 3. We agree with Petitioner. The plain language of claim 8 states what a feature flag indicates. Claim 24 recites where the feature flag is located. Neither claim suggests any of Patent Owner’s additional limitations.” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “[A] prior art reference will anticipate if it ‘disclose[s] each and every element of the claimed invention . . . arranged or combined in the same way as in the claim.’” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016) (quoting In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (alteration by Federal Circuit)). “However, a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Id. (quoting Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (alteration by Federal Circuit); In re Petering, 301 F.2d 676, 681 (CCPA 1962)). For the reasons explained below, we are persuaded that Petitioner has shown, by a preponderance of the evidence, that claims 1, 7, 8, 10, 11, 15, 16, 18, 19, and 23–25 are anticipated by Zhang. slip op. at 16

  Patent outcomesUS 10,602,448 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,602,448
• Cisco Systems, Inc. v. Portsmouth Network Corp.No claims unpatentable
  PTAB · Aug 4, 2025 · IPR2024-00503 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–18 were not shown unpatentable because the asserted obviousness combinations did not cure the failure to show the claimed request and routing steps.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art in the field of the ’279 patent in January 2001 “would have had a working knowledge of the network communication technologies that are pertinent to the ’279 patent, including network flow allocation in a ring topology.” Pet. 12. More specifically, Petitioner argues, a person of ordinary skill in the art “would have had a master’s degree in computer science, computer engineering, or an equivalent, and two years of professional experience relating to network communications and resource allocations,” where “[a]dditional work experience can substitute for specific educational background, and vice versa.” Id. (citing Ex. 1003 ¶ 20). Patent Owner represents that it “does not dispute Petitioner’s definition” for the purposes of its Response. PO Resp. 5. We find Petitioner’s proposal is consistent with the evidence of record, including the asserted prior art and the ’279 patent, and, therefore, we likewise adopt Petitioner’s proposed definition of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 11

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

    “Neither party contends that any formal claim construction is necessary. See Pet. 12 (“Petitioner submits that, for the purposes of this proceeding and the grounds presented herein, no claim term requires express construction.”); PO Resp. 4 (“Here, at this stage in the proceeding, Patent Owner will apply the ordinary and customary meaning to the ’279 Patent’s claim terms.”). Patent Owner notes, however, that Petitioner had asserted specific constructions in the Cisco litigation for the term “predetermined,” as recited in claims 1, 10, 14–16, and 18, and for the term “quantum.” PO Resp. 4. Specifically, according to Patent Owner, Petitioner proposed that “predetermined” be construed as “determined before the data flow request” and that “quantum” be construed as “an amount of a requested resource by which to increase or decrease.” Id. (citing Ex. 2007). Patent Owner contends asserted prior art combinations disclose or render obvious the challenged claims under these constructions. Id. Because our conclusion that Petitioner has not demonstrated that any of the challenged claims are unpatentable does not turn on the construction of either “predetermined” or “quantum,” there is no need for us to construe those terms. See Realtime Data, 912 F.3d at 1375.” slip op. at 12

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We again are not persuaded by Petitioner’s argument. As an initial matter, we find no argument with respect to “best effort data traffic” or dropped packets in the Petition. See Tr. 12:10–21 (conceding that “the phrase ‘best effort’ was not in the Petition” but arguing that it was raised in response to the Patent Owner Response). Moreover, we are unable to identify any argument in the Patent Owner Response to which this line of argument is properly responsive, and Petitioner does not identify any such line of argument. Instead, Petitioner’s argument appears to advance belatedly a new theory. See 37 C.F.R. § 42.23(b); Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 73–74, available at” slip op. at 43

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedMixed

    “We credit the supporting testimony of Dr. Olivier on the points discussed above, as it is explained sufficiently and consistent with the testimony simply mirrors the Petition and does not explain sufficiently why a person of ordinary skill in the art would have understood Kovvali in the manner Petitioner asserts. See Pet. 35; Reply 17–18; Ex. 1003 ¶ 83.” slip op. at 44

  Patent outcomesUS 7,035,279 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,035,279
• Innolux Corporation v. Phenix Longhorn LLCInstitution denied
  PTAB · Jun 9, 2025 · IPR2025-00044 · APJ Michael J Strauss · IPR · Institution

  The Board denied institution because the Petition violated Rule 42.104(b)(3) and did not show a reasonable likelihood that claims 1–3, 5, and 6 were unpatentable as obvious.

  RulingsInstitution decision

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

    “Accordingly, Petitioner has not identified corresponding structure for performing the recited functions of “optimizing . . . gamma reference voltage levels using means for executing a predetermined algorithm according to a predetermined criteria and data sensed by . . . at least one sensor, wherein said means for executing said predetermined algorithm is separate from [a] display to achieve [a] desired gamma curve” as required under 37 C.F.R. § 42.104(b)(3). Because Petitioner has not provided constructions, either rebutting the presumption that “means for executing” is a means-plus-function term, or identifying corresponding structure if it is a means-plus-function term, Petitioner has violated Rule 104(b)(3).” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person of ordinary skill in the art (POSA) “would have had at least a bachelor of science degree in physics, electrical engineering, or the equivalent thereof and three (3) years of experience in circuit design or display technologies.” Pet. 12 (citing Ex. 1003 ¶ 24). According to Petitioner “[s]uch a POSA would have had knowledge of integrated circuits, gamma correction, and storage of gamma correction voltage values within memory, and would have understood how to search available literature for relevant publications.” Id. (citing Ex. 1003 ¶ 24). Patent Owner applies Petitioner’s definition for the purposes of the Preliminary Response. Prelim. Resp. 2. For purposes of this Decision, and based on the current record, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art. Pet. 12. This assessment is consistent with the ’788 Patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 8

  • BurdenDecided for patent owner

    “Accordingly, Petitioner has not identified corresponding structure for performing the recited functions of “optimizing . . . gamma reference voltage levels using means for executing a predetermined algorithm according to a predetermined criteria and data sensed by . . . at least one sensor, wherein said means for executing said predetermined algorithm is separate from [a] display to achieve [a] desired gamma curve” as required under 37 C.F.R. § 42.104(b)(3). Because Petitioner has not provided constructions, either rebutting the presumption that “means for executing” is a means-plus-function term, or identifying corresponding structure if it is a means-plus-function term, Petitioner has violated Rule 104(b)(3).” slip op. at 20

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “and 5 recites “means for executing.” Ex. 1001, 7:36–40, 8:35–37. The use of the term “means” creates a rebuttable presumption that 35 U.S.C. § 112 ¶ 6 applies. See Williamson, 792 F.3d at 1348. Consistent with Patent Owner’s arguments (Prelim. Resp. 36–39), the Petition does not address the presumption and, more specifically, the Petition does not provide any argument or evidence as to why the presumption is rebutted. Furthermore, even if we were to consider Petitioner’s newly presented argument that “[t]he plain and ordinary meaning of ‘means for executing a predetermined algorithm . . . ’ connotes a general-purpose processor, which is understood as structure sufficient to perform the function” (Pet. Reply 5), such argument is not persuasive as it is not supported by evidence earlier presented in the Petition or otherwise. Furthermore, even if the plain and ordinary meaning of means for executing a predetermined algorithm were a general-purpose processor, for a computer implemented means-plus-function term the corresponding structure must be the specific algorithm implemented by the processor as argued by Petitioner. Pet. Reply 6.” slip op. at 16

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 7,557,788
• Intel Corporation / Lenovo (United States) Inc. et al. v. Collision Communications, Inc.Institution denied
  PTAB · May 28, 2025 · IPR2025-00301 · APJ Bart A Gerstenblith · IPR · Institution

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

  RulingsInstitution decision

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

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

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

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

  Discretionary denial
  Patents in suitUS 9,814,071
• Xu Peicheng (Hong Kong) Optoelectronic Technology Co., Limited v. Semisilicon Technology Corp.Some claims unpatentable
  PTAB · May 14, 2025 · IPR2024-00156 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1–3 and 8 are unpatentable over the stated obviousness grounds; claims 4–6 were not shown unpatentable because Hiroyuki does not teach the claimed terminal pins.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. Level of Ordinary Skill in the Art Relying on the Schubert Declaration, Petitioner proposes that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, physics, materials science, or a related discipline, and 6 years of 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), includes amendments to Section 103 that became effective on March 16, 2013. Because the challenged claims issued from an application filed before March 16, 2013, we apply pre-AIA law. See Pet. 2; Ex. 1001, codes (22), (30). 2 US 2009/0021955 A1, published January 22, 2009 (Ex. 1004, codes (10), (43)) (“Kuang”). Petitioner contends that Kuang is prior art to the ’546 patent at least under pre-AIA 35 U.S.C. § 102(b). Pet. 2. 3 US 2012/0050606 A1, published March 1, 2012 (Ex. 1005, codes (10), (43)) (“Debevec”). Petitioner asserts that “[b]ecause Debevec was filed prior to the priority date of the ’546 patent, it qualifies as prior art at least under pre-AIA 35 U.S.C. § 102(e).” Pet. 2. 4 US 6,774,584 B2, issued August 10, 2004 (Ex. 1008, codes (10), (45)) (“Lys”). Petitioner contends that Lys is prior art to the ’546 patent at least under pre-AIA 35 U.S.C. § 102(b). Pet. 2–3. 5 JP2006-228529, published August 31, 2006 (Ex. 1006, code (43)) (“Hiroyuki”). We refer herein to the certified English translation filed as Exhibit 1007. Petitioner contends that Hiroyuki is prior art to the ’546 patent at least under pre-AIA 35 U.S.C. § 102(b). Pet. 2. practical experience in designing or fabricating LED lighting systems, including controlling and driving LEDs,” or “[a]lternatively . . . would have had a master’s degree and four years of experience, or a Ph.D. degree and two years of experience.” Pet. 5 (citing Ex. 1003 ¶ 31). Patent Owner applies Petitioner’s asserted level of ordinary skill in the art. PO Resp. 7–8. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’546 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16

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

    “The parties also dispute the interpretation of the term “synchronous signals” recited in claim 1, with the parties proposing these respective constructions: Petitioner’s Proposed Patent Owner’s Proposed Construction Construction “signals that are sent to the slave “signals related to activities governed by synchronized timing” nodes to control their corresponding LED strings at the same time.”” slip op. at 20

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “The “context” is typically evaluated by reviewing the intrinsic record. See e.g., Regeneron, 130 F.4th at 1380–84. Here, as discussed above, the ’546 patent has multiple disclosures where a curtain lamp has a single light-emitting diode in one light-emitting diode string. See Ex. 1001, 1:33–36, 6:15–20, 6:27–40, 8:25–45. In particular, the ’546 patent similarly discloses a first curtain lamp with one LED in one light string, as well as a second curtain lamp, which provides further support for Petitioner’s proposed interpretation. Id. at 8:25–45. Although Patent Owner argues that Figures 7 and 8 disclose multiple LEDs and light strings in curtain lamps, other embodiments and claims explicitly indicate single components in a “curtain lamp.” “[T]here is a strong presumption against a claim construction that excludes a disclosed embodiment.” See In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1324 (Fed. Cir. 2011). Given that certain embodiments and claim 8 disclose a curtain lamp with one light string with one LED, we decline to interpret the claim to prohibit Petitioner’s interpretation. Additionally, we do not find that Petitioner’s claim interpretation renders the claim terms nonsensical or illogical. See Becton, 616 F.3d at 1255. Patent Owner asserts otherwise, arguing that Petitioner’s interpretation is based upon a “nonsensical” or “absurd[]” argument, there is no reason to have both a master and slave control unit to operate a single LED, and the interpretation renders most of the components superfluous. See PO Sur-reply 12; PO Resp. Supp. Br. 5. As discussed above, however, although the ’546 patent does not appear to provide any explanation for why there are master and slave control units to operate a single LED, the patent nevertheless discloses that in embodiments. This situation is also distinguishable from Becton, where “unequivocal language” of the claim recited “spring means ‘connected to’ the hinged arm,” such that interpreting the spring means and the hinged arm as the same structure would have rendered the claim nonsensical. Becton, 616 F.3d at 1254–55. Becton further found that interpreting the spring means and hinged arm as the same structure would be inconsistent with descriptions of the elements in the specification. Id. Here, in contrast, the ’546 patent Specification is replete with disclosures of a curtain lamp having one light string with one LED, and claim 8 is directed to the same. Accordingly, we adopt Petitioner’s interpretation of these claim elements.” slip op. at 36

  • Strike new argumentNew argument consideredDecided for petitioner

    “Although Patent Owner argues that Petitioner’s arguments in the Reply on “light strings” and “curtain lamp” as they relate to a single LED are improper, we do not agree. As Patent Owner acknowledges, the Petition and Dr. Schubert’s original declaration stated that a “curtain lamp” is “commonly understood to be one or more light strings.” See PO Sur-reply 12; see also Pet. 8; Ex. 1003 ¶ 37. Patent Owner did not contest Petitioner’s interpretation in its Response. See PO Resp. 15. Patent Owner did, however, argue that Kuang did not teach or suggest “light strings” in any form and therefore did not teach a “curtain lamp” under Petitioner’s definition of the same. PO Resp. 15–17. A petitioner reply may respond to arguments raised in a patent owner’s response under 35 U.S.C. § 42.23(b), and here Petitioner’s argument that a light string may have a single LED is properly presented in its Reply in response to Patent Owner’s arguments. Further, Patent Owner was not only aware that Petitioner had taken the position that a “curtain lamp” could be a single “light string,” but Patent Owner also did not dispute Petitioner’s interpretation.8 Our view, therefore, is that Petitioner’s argument that a curtain lamp may be a single LED is proper because it is corollary to Petitioner’s reply arguments on light strings. That is, Petitioner’s assertion follows from the reply arguments on light strings and the unopposed interpretation of curtain lamp as a single light string. Additionally, to the extent there could be any prejudice to Patent Owner by these light string and curtain lamp arguments, Patent Owner has had opportunities to address them by supplemental briefing.” slip op. at 32

  Patent outcomesUS 8,884,546 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,884,546
• Cisco Systems, Inc. v. Portsmouth Network Corp.Instituted
  PTAB · May 2, 2025 · IPR2024-01450 · APJ Justin T Arbes · IPR · Institution

  Instituted inter partes review of claims 1–4, 6–11, and 13–20 on all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable over Dziong and Sathyanath.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’088 patent (January 2006), a person of ordinary skill in the art would have had “a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent training, and approximately four years of experience working in the field of network communications, including experience with [Multiprotocol Label Switching (MPLS)] tunnels and bandwidth allocation,” where “[a]dditional work experience can substitute for specific educational background, and vice versa.” Pet. 12 (citing Ex. 1003 ¶¶ 20–21). Petitioner further contends that a person of ordinary skill in the art would have been knowledgeable and familiar with the network communications technologies discussed in [the Specification of the ’088 patent], including bandwidth reservations, quality of service techniques, routing protocols (including Open Shortest Path First (OSPF)), tunneling protocols (including [MPLS]), resource reservations (including Resource ReSerVation Protocol (RSVP)), traffic engineering (including relevant extensions to OSPF, IS-IS, and RSVP), and ring networking standards (e.g., Synchronous Optical Network (SONET) and resilient packet ring (RPR) defined by IEEE 802.17). Id. Patent Owner states that “Petitioner’s definition . . . is acceptable for” purposes of its Preliminary Response. Prelim. Resp. 8 n.3. Based on the record presented, including our review of the ’088 patent and the types of problems and solutions described in the ’088 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 9

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

    “37 C.F.R. § 42.100(b). Petitioner argues that “no claim term requires express construction.” Pet. 12–13. Patent Owner does not propose interpretations of any claim terms in its Preliminary Response. We conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted) (emphasis added)).” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted

    “Patent Owner, however, does not explain sufficiently why any of these issues demonstrate a failure to teach limitation [1.1]. We understand Petitioner’s position to be that Dziong identifies “two or more candidate routes” (i.e., A-B-C-D and A-C-D) for a “new connection” (i.e., a new recovery path to protect primary path SRLG 4 in the event of failure) with a “requested bandwidth” (i.e., 15 units) sufficient to protect against failure. See Pet. 27–31 (citing Ex. 1005 ¶¶ 36, 70, 89, 90, 104, 105). The 15 units are the “units of demand” on SRLG 4 that must be protected. Ex. 1005 ¶¶ 89 (“[E]ach solid line represents all of the demands that have the same link-detour path, which is represented by a corresponding broken line. For example, solid line 606 in SRLG 4 corresponds to one or more demands totaling 15 units of bandwidth between nodes A and D.”), 90. A link in a potential recovery path for that demand on SRLG 4, therefore, would need to have “sufficient recovery bandwidth” to protect against failure (i.e., at least 15 units). Id. ¶¶ 36, 104. That is reflected in the “SRLG 4 failure” column of Figure 6(b) for link A-B (part of the A-B-C-D recovery path shown in blue in Figure 6(a) above). On this record, we do not see why the fact that link A-B also protects against failures of SRLG 3 and 5 and has its own 12 units of demand, or the fact that SRLG 4 also has another 24 units of demand (which link A-B does not protect against), contradicts Petitioner’s position regarding Dziong and limitation [1.1]. See id. ¶¶ 89–90 (“link A-B is not part of the link-detour path for the other 24 XC units of demand on SRLG 4”). At this stage, we find that Petitioner has made a sufficient showing that Dziong teaches limitation [1.1]. Therefore, we need not evaluate any additional arguments regarding Sathyanath at this time. See Pet. 31–32; Prelim. Resp. 14–16.” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted

    “We disagree based on the current record. Dziong refers to both “link-based” and “path-based” recovery. Ex. 1005 ¶¶ 6–8. And the two methods are similar in various ways, as Dziong recognizes. See, e.g., id. ¶¶ 69 (“While some of the algorithms utilized in a link-based scheme are related to path-based recovery algorithms, there are significant modifications and special considerations that are made in the case of link-based recovery.”), 103 (“In some areas, the issues associated with recovery path calculation for link-based recovery [are] analogous to recovery path calculations for path-based restoration . . . .”). Dziong also purports to incorporate Sathyanath’s application by reference. Id. ¶ 1. And, as Petitioner points out, the references have similar disclosures and similar discussions of bandwidth sharing. See Pet. 1, 20–22; Ex. 1005 ¶¶ 10–12, 36–39, 60, 65, 88; Ex. 1006 ¶¶ 4, 12–13, 41–45, 200. Thus, on this record, we disagree with Patent Owner that a person of ordinary skill in the art would not consider combining the teachings of Dziong and Sathyanath. See In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012) (“A reference must be considered for everything that it teaches, not simply the described invention or a preferred embodiment.”); In re Hyon, 679 F.3d 1363, 1366 (Fed. Cir. 2012) (affirming an obviousness determination where two “references both teach processes directed to making the same class of products” and minor differences between the disclosures did not “negate the motivation to combine”). Second, Patent Owner argues that Petitioner “fails to identify specific teachings in Sathyanath that a [person of ordinary skill in the art] would have been motivated to implement in Dziong with a reasonable expectation of success” and “does not explain how the features would have been combined or why there would have been a reasonable expectation of success in doing so.” Prelim. Resp. 11. Patent Owner, however, only mentions Petitioner’s introductory statement regarding reasons to combine and does not address the substance of Petitioner’s arguments for claim 1, where Petitioner explains how it is relying on Sathyanath as a secondary reference. See Prelim. Resp. 10–11 (citing Pet. 22–23). For example, regarding the “sharing definition” of limitation [1.2], Petitioner argues that because Dziong only gives “limited details about the data format used for sharing” reserved bandwidth information, “it would have been obvious to consider . . . Sathyanath’s examples,” relying on two particular alleged “sharing definition[s]” in Sathyanath (i.e., the “aggregate node-link vector” and “TE/Share database”). Pet. 36–39. Based on the current record, we preliminarily find that Petitioner has made a sufficient showing, supported by the testimony of Dr. Mir, that a person of ordinary skill in the art would have been motivated to use such data formats to share reserved bandwidth information in the system of Dziong, with a reasonable expectation of success. See id.; Ex. 1003 ¶¶ 38–39, 72–79.” slip op. at 38

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,596,088
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution denied
  PTAB · Apr 28, 2025 · IPR2024-01500 · APJ Neil T Powell · IPR · Institution

  Institution of IPR challenging claims 1–5 was denied because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.

  RulingsInstitution decision

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

    “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). For the reasons that follow, we do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or an equivalent field, and two years of experience with cellular telecommunications, radio-access network architectures and protocols, and signal propagation in wireless networks.” Pet. 7 (citing Ex. 1003 ¶ 54). Petitioner further proposes that “[m]ore education can supplement practical experience and vice versa.” Id. (citing Ex. 1003 ¶ 54). 6 Elgamal, U.S. Patent No. 6,898,248 B1, issued May 24, 2005 (Ex. 1008, “Elgamal”). 7 Frank et al., U.S. Patent Application Publication No. 2003/0035469 A1, published Feb. 20, 2003 (Ex. 1006, “Frank”). 8 Zha et al., “Soft-Decision Successive Interference Cancellation CDMA Receiver with Amplitude Averaging and Robust to Timing Errors,” Proc. IEEE Global Telecommunications Conference, 2001 (GLOBECOM ’01), vol. 2, 2001, pp. 743–747 (Ex. 1010, “Zha”). In its Preliminary Response, Patent Owner does not take a position on the relevant level of ordinary skill in the art. See generally Prelim. Resp. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’703 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 7

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “provide sufficiently persuasive evidence in support of its position that claim 1’s “decoders” has a meaning broad enough to correspond to Zha’s decision rule. Petitioner disputes Patent Owner’s understanding of claim 1’s “decoders” by arguing that “[Patent Owner] does not argue that the specification disclaims decoders that do not perform error correction, or otherwise expressly limits the claimed bank of decoders to error correction.” Prelim. Reply 6. In support of its position, Petitioner cites Dr. Min’s testimony that “[i]n my opinion, a [person of ordinary skill in the art] would have understood that the ‘decision rule’ would be implemented using a decoder, as decoders typically make bit decisions.” Ex. 1003 ¶ 178; Pet. 59. Dr. Min does not cite any objective evidence in support of this view. Ex. 1003 ¶ 178. In response, Patent Owner marshals intrinsic evidence, along with Dr. Caire’s testimony based on objective supporting evidence. Prelim. Resp. 47–48; Prelim. Sur-Reply 5–6. For example, arguing that all embodiments disclosed in the ’703 patent use error-correcting coding, Patent Owner emphasizes the ’703 patent’s statement that “the [’703 patent’s] specification states that ‘[t]he invention is based on an iterative decoding solution that exploits error correction codes.’” Prelim. Sur-Reply 6 (quoting Ex. 1001, 25:27–29 (emphasis added by Patent Owner)). Patent Owner also cites the Abstract of the ’703 patent, which states that “[t]he present invention provides Turbo-decoding for joint signal demodulation based on an iterative decoding solution that exploits error correction codes.” Ex. 1001, code (57); Prelim. Sur-Reply 6. Patent Owner also cites Dr. Caire’s testimony that “any reasonable understanding of a decoder is one that implements an error correction coding approach.” Ex. 2001 ¶ 98; Prelim. Resp. 47. Dr. Caire cite objective evidence that supports this view. Ex. 2001 ¶ 98 (citing Ex. 2003, 3; Ex. 2004, 11; Ex. 2005, 228). Weighing the parties’ arguments and evidence, we find Patent Owner’s more persuasive than Petitioner’s. Starting with the intrinsic evidence, Patent Owner’s citation of the ’703 patent’s repeated statements that the “invention . . . exploits error correction codes” is more persuasive than Petitioner’s argument that the ’703 patent does not disclaim other approaches. Prelim. Sur-Reply 6 (citing Ex. 1001, 25:27–29, code (57)); Prelim. Reply 6. Petitioner argues that certain background documents suggest decoders may have a broad meaning, but this attorney argument warrants less weight than Dr. Caire’s testimony. Prelim. Reply 7 (citing Ex. 2003, 18–20; Ex. 2004, 7, 9). Accordingly, in sum, Petitioner does not” slip op. at 16

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached

    “In view of all the parties’ arguments and evidence, we do not find a reasonable likelihood of Petitioner prevailing on this issue. When questioning who exactly had rights to which specific inventions of Mr. McElwain’s, Petitioner glosses over the key, undisputed fact that Mr. McElwain assigned the invention of the ’703 patent to the exact same entity to which Brommer was assigned, specifically BAESI. Ex. 2012, 2; Ex. 2011, 2. Mr. McElwain did so shortly after BAE filed Mr. McElwain’s provisional application on April 14, 2003, which both parties treat as the ’703 patent’s date of invention. Ex. 2012, 2; Ex. 2013, 1; Prelim. Resp. 32; Prelim. Reply 1. This, in combination with Patent Owner’s evidence regarding Mr. McElwain’s EPIIA and BAE’s acquisition of Lockheed Martin’s Aerospace Electronics System Business, evinces that Mr. McElwain had an obligation on April 14, 2003, to assign the invention of the ’703 patent to BAESI. Exs. 2014–2016. As Patent Owner notes, Petitioner does not advance a reason that Mr. McElwain would not have been obligated on April 14, 2003, to assign the invention of the ’703 patent to BAESI, much less provide evidence that he was not so obligated. See generally Prelim. Reply; Prelim. Sur-Reply 2. In sum, weighing the parties’ arguments and evidence, we do not find that Petitioner has a reasonable likelihood of prevailing on its position that Brommer is prior art to the ’703 patent for purposes of obviousness. Accordingly, we do not find that Petitioner has demonstrated a reasonable likelihood of prevailing on any of its assertions that the claims of the ’703 patent would have been obvious over Brommer in combination with other references.” slip op. at 20

  § 103 obviousnesscites Phillips
  Patents in suitUS 7,463,703
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution denied
  PTAB · Mar 21, 2025 · IPR2024-01250 · APJ Bart A Gerstenblith · IPR · Institution

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

  RulingsInstitution decision

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

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

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,089,946

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.